USITC Publication 5259

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In the Matter of
CERTAIN ELECTRONIC NICOTINE
DELIVERY SYSTEMS AND COMPONENTS
THEREOF
Investigation No. 337-TA-1139
Publication 5259 February 2022
U.S. International Trade Commission
Washington, DC 20436

U.S. International Trade Commission
COMMISSIONERS
David S. Johanson, Chairman
Rhonda K. Schmidtlein, Commissioner
Jason E. Kearns, Commissioner
Randolph J. Stayin, Commissioner
Amy A. Karpel, Commissioner
Address all communications to
Secretary to the Commission
United States International Trade Commission
Washington, DC 20436

U.S. International Trade Commission
Washington, DC 20436
www.usitc.gov
In the Matter of
CERTAIN ELECTRONIC NICOTINE
DELIVERY SYSTEMS AND COMPONENTS
THEREOF
Investigation No. 337-TA-1139
Publication 5259 February 2022

UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN ELECTRONIC NICOTINE
DELIVERY SYSTEMS AND
COMPONENTS THEREOF
Investigation No. 337-TA-1139
ISSUANCE OF LIMITED EXCLUSION ORDER AND
CEASE AND DESIST ORDERS; TERMINATION OF THE INVESTIGATION
AGENCY: U.S. International Trade Commission.
ACTION: Notice.
SUMMARY: Notice is hereby given that the U.S. International Trade Commission has
determined to issue a limited exclusion order (“LEO”) and cease and desist orders (“CDOs”)
directed to respondent Eonsmoke, LLC (“Eonsmoke”) and defaulted respondent XFire, Inc.
(“XFire”) in the above-captioned investigation. The investigation is terminated in its entirety.
FOR FURTHER INFORMATION CONTACT: Cathy Chen, Office of the General Counsel,
U.S. International Trade Commission, 500 E Street SW, Washington, D.C. 20436, telephone
202-205-2392. Copies of non-confidential documents filed in connection with this investigation
may be viewed on the Commission’s electronic docket (EDIS) at https://edis.usitc.gov. For help
accessing EDIS, please email EDIS3Help@usitc.gov. General information concerning the
Commission may also be obtained by accessing its Internet server at
https://www.usitc.gov. Hearing-impaired persons are advised that information on this matter can
be obtained by contacting the Commission’s TDD terminal on (202) 205-1810.
SUPPLEMENTARY INFORMATION: On December 13, 2018, the Commission instituted
this investigation under section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. 1337,
based on a complaint filed on behalf of Juul Labs, Inc. (“JLI”) of San Francisco, California. 83
FR 64156 (Dec. 13, 2018). The complaint, as amended and supplemented, alleges violations of
section 337 based upon the importation into the United States, the sale for importation, and the
sale within the United States after importation of certain electronic nicotine delivery systems and
components thereof by reason of infringement of certain claims of U.S. Patent Nos.: 10,070,669
(“the ’669 patent”); 10,076,139 (“the ’139 patent”); 10,045,568 (“the ’568 patent”); 10,058,130
(“the ’130 patent”); and 10,104,915 (“the ’915 patent”) (collectively, “the Asserted Patents”). Id.
The Commission’s notice of investigation named twenty-one respondents, including Eonsmoke
of Clifton, New Jersey and XFire of Stafford, Texas. Id. at 64157. The Office of Unfair Import
Investigations (“OUII”) is also a party to the investigation.

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On February 25, 2019, the ALJ granted JLI’s motion to amend the complaint and notice
of investigation to change the name of respondent Bo Vaping of Garden City, New York to
ECVD/MMS Wholesale LLC of Garden City, New York and the name of respondent MMS
Distribution LLC of Rock Hill, New York to MMS/ECVD LLC of Garden City, New York. See
Order No. 8 (Feb. 25, 2019), not rev’d by Comm’n Notice (Mar. 25, 2019).
On February 28, 2019, the ALJ granted a motion to amend the complaint and notice of
investigation to change the name of respondent Limitless Mod Co. of Simi Valley, California to
Limitless MOD, LLC of Simi Valley, California. See Order No. 10 (Feb. 28, 2019), not rev’d by
Comm’n Notice (Mar. 27, 2019).
On May 21, 2019, the ALJ granted a motion to amend the complaint and notice of
investigation to change the name of respondent Ziip Lab Co., Ltd. of Guangdong Province,
China to SS Group Holdings of Guangdong Province, China. See Order No. 26 (May 21, 2019),
not rev’d by Comm’n Notice (June 14, 2019).
Before the evidentiary hearing, JLI settled with the following eight respondents: J Well
France S.A.S. of Paris, France; ECVD/MMS Wholesale LLC; MMS/ECVD LLC; The Electric
Tobacconist, LLC of Boulder, Colorado; ALD Group Limited of Guangdong Province, China;
Flair Vapor LLC of South Plainfield, New Jersey; Shenzhen Joecig Technology Co., Ltd. of
Guangdong Province, China; and Myle Vape Inc. of Jamaica, New York. See Order No. 13
(Mar. 12, 2019), not rev’d by Comm’n Notice (Apr. 5, 2019); Order No. 16 (Mar. 21, 2019), not
rev’d by Comm’n Notice (Apr. 4, 2019); Order No. 31 (July 30, 2019), not rev’d by Comm’n
Notice (Aug. 23, 2019); Order No. 32 (July 30, 2019), not rev’d by Comm’n Notice (Aug. 23,
2019); Order No. 33 (July 30, 2019), not rev’d by Comm’n Notice (Aug. 23, 2019); Order No.
34 (July 30, 2019), not rev’d by Comm’n Notice (Aug. 23, 2019).
In addition, the investigation terminated as to the following six respondents based on a
consent order stipulation and the issuance of a consent order: Vapor Hub International, Inc. of
Simi Valley, California; Limitless MOD, LLC; Asher Dynamics, Inc. of Chino, California; Ply
Rock of Chino, California; Infinite-N Technology Limited of Guangdong Province, China; and
King Distribution LLC of Elmwood Park, New Jersey. See Order No. 9 (Feb. 27, 2019), not
rev’d by Comm’n Notice (Mar. 27, 2019); Order No. 11 (Feb. 28, 2019), not rev’d by Comm’n
Notice (Mar. 26, 2019); Order No. 18 (Mar. 28, 2019), not rev’d by Comm’n Notice (Apr. 11,
2019); Order No. 20 (Apr. 2, 2019), not rev’d by Comm’n Notice (Apr. 15, 2019).
On April 23, 2019, the ALJ found respondent XFire in default pursuant to Commission
Rule 210.16(b), 19 CFR 210.16(b). See Order No. 22 (Apr. 23, 2019), not rev’d by Comm’n
Notice (May 16, 2019). At the time XFire was found in default, it was accused of infringing
claims 1, 2, 4, 5, 7, 8, 10, 12, 13, 16, 17, 20, and 21 of the ’669 patent; claims 1, 2, 3, 4, 9, 10,
11, 13, 14, 19, 20, 21, 24, 28, and 29 of the ’139 patent; and claims 1, 2, 3, 4, 6, 9, 11, 12, 18, 19,
20, 21, 22, 23, and 27 of the ’915 patent (collectively, “the Asserted XFire Claims”).
Also, prior to the evidentiary hearing, the ALJ granted JLI’s motion for partial
termination of the investigation with respect to allegations of infringement as to all asserted
claims of the ’139 patent and certain asserted claims of the other Asserted Patents. See Order

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No. 36 (Aug. 8, 2019), not rev’d by Comm’n Notice (Sep. 5, 2019). As a result, the following
claims remain at issue in the investigation: claims 1, 2, and 13 of the ’669 patent; claims 12, 17,
and 20 of the ’568 patent; claims 1, 2, and 4 of the ’130 patent; and claims 1, 6, and 21 of the
’915 patent (collectively, “the Asserted Eonsmoke Claims”).
JLI and the Commission were unable to serve respondent Keep Vapor Electronic Tech.
Co., Ltd. of Shenzhen, China despite multiple attempts at service. The final ID states that JLI
does not request any relief against this respondent. See ID at 2 n.1.
Only five respondents participated in the evidentiary hearing: SS Group Holdings; ZLab
S.A. of Punta del Este – Maldonado, Uruguay; Shenzhen Yibo Technology Co. Ltd. Of
Guangdong Province, China (collectively, “the Ziip Respondents”); Vapor 4 Life Holdings, Inc.
of Northbrook, Illinois (“V4L”); and Eonsmoke.
On August 5, 2019, one day before the prehearing conference, the ALJ issued an ID
(Order No. 35), granting JLI’s motion for summary determination of importation,
infringement, and domestic industry. The ALJ found that JLI was entitled to summary
determination of importation with respect to the Ziip Respondents and their accused products;
Eonsmoke and its accused products; and V4L and certain V4L accused products. See Order
No. 35 at 4-11 (Aug. 5, 2019). Citing to a stipulation between JLI and the Ziip Respondents,
the ALJ stated in his infringement analysis with respect to the Ziip Respondents’ accused
products that “the question of whether Ziip accused products contain or perform each
limitation of asserted claims is moot.” Id. at 11. The ALJ did not specifically state whether
summary determination of infringement as to the Ziip Respondents was denied or granted nor
the reasoning supporting grant or denial of the motion as to this issue. Id.
An evidentiary hearing was held from August 6-7, 2019.
On September 4, 2019 the Commission reviewed Order No. 35 in part. Specifically,
the Commission reviewed the ALJ’s analysis as to infringement and a statement regarding
mootness on page 11 of the ID. The Commission remanded to the ALJ for clarification on
this issue and as to whether the ID grants or denies summary determination that the Ziip
Respondents infringe the Asserted Patents. See Comm’n Notice (Sep. 4, 2019).
In response to the Commission’s September 4, 2019 Notice, the ALJ clarified that Order
No. 35 denied summary determination of infringement as to the Ziip Respondents because that
issue was moot in light of the stipulation between JLI and the Ziip Respondents. See Remand of
Order No. 35 (Oct. 10, 2019).
On November 19, 2019, the ALJ granted motions to terminate the investigation as to the
Ziip Respondents and V4L based on settlement agreements. See Order Nos. 38 and 39 (Nov. 19,
2019), not rev’d by Comm’n Notice (Dec. 16, 2019). Accordingly, only respondent Eonsmoke
remains active in this investigation.

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On December 12, 2019, the ALJ granted JLI’s motion to strike portions of Eonsmoke’s
posthearing brief. See Order No. 40 (Dec. 12, 2019). Specifically, these portions relate to the
issue of invalidity of asserted claim 4 of the ’915 patent, which was not addressed by
Respondents’ expert or in their prehearing briefings. Id. at 3-5.
On December 13, 2019, the ALJ issued a combined final ID and recommended
determination (“RD”), finding a violation of section 337 by respondent Eonsmoke. Specifically,
the final ID finds, inter alia, that JLI satisfied the importation requirement as to Eonsmoke’s
accused products; that JLI has shown Eonsmoke’s accused products infringe the Asserted
Eonsmoke Claims; that JLI has satisfied the domestic industry requirement with respect to the
’669, the ’568, the ’130, and the ’915 patents; and that the Asserted Eonsmoke Claims have not
been shown to be invalid. In addition, in the event the Commission finds a violation of section
337, the RD recommends that the Commission issue an LEO and CDOs directed at each of
respondent Eonsmoke and defaulted respondent XFire, and impose a 100 percent bond during
the period of Presidential review. No public interest submissions were filed in response to the
Federal Register notice seeking such submissions, 85 FR 3720 (Jan. 22, 2020).
No petitions for review were filed, which means each party has abandoned all issues
decided adversely to that party. See 19 CFR 210.43(b)(4).
On February 13, 2020, the Commission determined to sua sponte review the final ID in
part. 85 FR 9803-06 (Feb. 20, 2020). Specifically, the Commission determined to review and,
on review, declined to adopt the discussion of the validity of element [c] of claim 12 of the ’669
patent on pages 50 and 55 of the final ID. The Commission also determined to review the
discussion of Warranty and Customer Support and Regulatory Compliance on pages 265-266 of
the final ID and the discussion of the quantitative significance of JLI’s contract manufacturers’
investments in the last paragraph on page 272 of the final ID. The Commission determined not
to review the remainder of the final ID, including the other portions of the ID’s domestic
industry analysis, which were sufficient to support the final ID’s finding that JLI has satisfied the
domestic industry requirement under subparagraphs 337(a)(3)(A) and (B) with respect to the
’669, the ’568, the ’130, and the ’915 patents. Accordingly, the Commission’s determination
resulted in finding a violation of section 337 by reason of Eonsmoke’s importation of electronic
nicotine delivery systems and components thereof that infringe one or more of the Asserted
Eonsmoke Claims. The Commission also determined that JLI is entitled to relief against
defaulted respondent XFire pursuant to 19 U.S.C. 1337(g)(1). The parties were requested to file
written submissions on remedy, the public interest, and bonding.
On February 27, 2020 JLI and OUII submitted their briefs on remedy, the public interest,
and bonding. JLI and OUII further filed response briefs on March 5, 2020.
On review, the Commission has determined to affirm the discussion of Warranty and
Customer Support and Regulatory Compliance as it concerns the economic prong of the
domestic industry requirement on pages 265-66 of the final ID. The Commission has also
determined to decline to adopt the discussion of the quantitative significance of JLI’s contract
manufacturers’ investments as it concerns the economic prong of the domestic industry
requirement in the last paragraph on page 272 of the final ID.

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The Commission has further determined that the appropriate remedy in this investigation
is: (1) an LEO directed to a) respondent Eonsmoke prohibiting the unlicensed importation of
nicotine vaporizer devices and the associated pods sold for use with the devices, and components
thereof that infringe one or more of the Asserted Eonsmoke Claims and b) respondent XFire
prohibiting the unlicensed importation of nicotine vaporizer devices and the associated pods sold
for use with the devices, and components thereof that infringe one or more of the Asserted XFire
Claims; and (2) CDOs prohibiting respondents Eonsmoke and XFire from further importing,
selling, and distributing infringing products in the United States. The Commission has also
determined that the public interest factors enumerated in paragraphs 337(d)(1), (f)(1), and (g)(1)
(19 U.S.C. 1337(d)(1), (f)(1), and (g)(1)), do not preclude issuance of these remedial orders.
Finally, the Commission has determined that the bond during the period of Presidential review
pursuant to 19 U.S.C. 1337(j) shall be in the amount of 100 percent of the entered value of the
imported articles. The Commission’s order was delivered to the President and to the United
States Trade Representative on the day of its issuance. The investigation is hereby terminated.
While temporary remote operating procedures are in place in response to COVID-19, the
Office of the Secretary is not able to serve parties that have not retained counsel or otherwise
provided a point of contact for electronic service. Accordingly, pursuant to Commission Rules
201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission orders that the
Complainant complete service for any party without a method of electronic service noted on the
attached Certificate of Service and shall file proof of service on the Electronic Document
Information System (EDIS).
The authority for the Commission’s determination is contained in section 337 of the
Tariff Act of 1930, as amended, 19 U.S.C. 1337, and in Part 210 of the Commission’s Rules of
Practice and Procedure, 19 CFR Part 210.
By order of the Commission.
Lisa R. Barton
Secretary to the Commission
Issued: 	April 20, 2020

CERTAIN ELECTRONIC NICOTINE DELIVERY SYSTEMS
AND COMPONENTS THEREOF
Inv. No. 337-TA-1139
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached NOTICE has been served via EDIS
upon the Commission Investigative Attorney, Paul Gennari, Esq., and the following parties
as indicated, on April 20, 2020.
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Juul Labs, Inc.:
Daniel E. Yonan, Esq.
STERNE, KESSLER, GOLDSTEIN & FOX, P.L.L.C.
1100 New York Avenue, N.W.
Washington, DC 20005
Email: dyonan@sternekessler.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification of
Availability for Download
On Behalf of Respondents Eonsmoke, LLC:
Stephen M. Lobbin, Esq.
SML AVVOCATI P.C.
7538 Draper Avenue
San Diego, California 92037
Email: sml@smlavvocati.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification of
Availability for Download
Respondent:
XFire, Inc.
820 Summer Park Dr., Suite 700
Stafford, TX 77477
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by
Complainants

1
UNITED STATES INTERNATIONAL TRADE COMMISSION
WASHINGTON, DC
In the Matter of
CERTAIN ELECTRONIC NICOTINE
DELIVERY SYSTEMS AND
COMPONENTS THEREOF
Investigation No. 337-TA-1139
LIMITED EXCLUSION ORDER
The Commission has determined that there is a violation of section 337 of the Tariff Act
of 1930, as amended (19 U.S.C. § 1337), in the unlawful importation, sale for importation, or the
sale within the United States after importation by Eonsmoke, LLC (“Eonsmoke”) and XFire, Inc.
(“XFire”) (collectively, “Respondents”) of certain nicotine vaporizer devices and the associated
pods sold for use with the devices, and components thereof that infringe one or more claims of
U.S. Patent Nos. 10,070,669 (“the ’669 patent”); 10,045,568 (“the ’568 patent”); 10,058,130
(“the ’130 patent”); 10,104,915 (“the ’915 patent”); and 10,076,139 (“the ’139 patent”).
Having reviewed the record of this investigation, including the written submissions of the
parties, the Commission has made its determination on the issues of remedy, the public interest,
and bonding. The Commission has determined that the appropriate form of relief includes a
limited exclusion order prohibiting the unlicensed entry of infringing nicotine vaporizer devices
and the associated pods sold for use with the devices, and components thereof manufactured
abroad by or on behalf of, or imported by or on behalf of, the Respondents or any of their
affiliated companies, parents, subsidiaries, or other related business entities, or their successors
or assigns.

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The Commission has determined that the public interest factors enumerated in 19 U.S.C.
§§ 1337(d)(1) and (g)(1) do not preclude issuance of the limited exclusion order, and that the
bond during the period of Presidential review shall be in the amount of 100 percent of the
entered value of the infringing articles.
Accordingly, the Commission hereby ORDERS that:
1. 	Nicotine vaporizer devices and the associated pods sold for use with the devices,
and components thereof that infringe one or more of claims 1, 2, and 13 of the ’669 patent;
claims 12, 17 and 20 of the ’568 patent; claims 1, 2 and 4 of the ’130 patent; and claims 1, 6 and
21 of the ’915 patent that are manufactured abroad by or on behalf of, or imported by or on
behalf of, Eonsmoke or any of its affiliated companies, parents, subsidiaries, or other related
business entities, or their successors or assigns, are excluded from entry for consumption into the
United States, entry for consumption from a foreign trade zone, or withdrawal from a warehouse
for consumption, for the remaining term of the patent, except under license of the patent owner
or as provided by law.
2. 	Nicotine vaporizer devices and the associated pods sold for use with the devices,
and components thereof that infringe one or more of infringing claims 1, 2, 4, 5, 7, 8, 10, 12, 13,
16, 17, 20, and 21 of the ’669 patent; claims 1, 2, 3, 4, 9, 10, 11, 13, 14, 19, 20, 21, 24, 28, and
29 of the ’139 patent; and claims 1, 2, 3, 4, 6, 9, 11, 12, 18, 19, 20, 21, 22, 23, and 27 of the ’915
patent that are manufactured abroad by or on behalf of, or imported by or on behalf of, XFire or
any of its affiliated companies, parents, subsidiaries, or other related business entities, or their
successors or assigns, are excluded from entry for consumption into the United States, entry for
consumption from a foreign trade zone, or withdrawal from a warehouse for consumption, for
the remaining term of the patent, except under license of the patent owner or as provided by law.

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3. 	Notwithstanding paragraphs 1 and 2 of this Order, the aforesaid nicotine vaporizer
devices and the associated pods sold for use with the devices, and components thereof (“covered
articles”) are entitled to entry into the United States for consumption, entry for consumption
from a foreign-trade zone, or withdrawal from a warehouse for consumption under bond in the
amount of one hundred (100) percent of the entered value of the products, pursuant to subsection
(j) of Section 337 (19 U.S.C. § 1337(j)) and the Presidential Memorandum for the United States
Trade Representative of July 21, 2005 (70 Fed. Reg. 43,251), from the day after this Order is
received by the United States Trade Representative until such time as the United States Trade
Representative notifies the Commission that this Order is approved, disapproved, or no action is
taken but, in any event, not later than sixty (60) days after the date of receipt of this Order. All
entries of covered articles made pursuant to this paragraph are to be reported to U.S. Customs
and Border Protection (“CBP”), in advance of the date of the entry, pursuant to procedures CBP
establishes.
4. 	At the discretion of CBP and pursuant to procedures that it establishes, persons
seeking to import nicotine vaporizer devices and the associated pods sold for use with the
devices, and components thereof that are potentially subject to this Order may be required to
certify that they are familiar with the terms of this Order, that they have made appropriate
inquiry, and thereupon state that, to the best of their knowledge and belief, the products being
imported are not excluded from entry under paragraphs 1 and 2 of this Order. At its discretion,
CBP may require persons who have provided the certification described in this paragraph to
furnish such records or analyses as are necessary to substantiate the certification.

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5. 	In accordance with 19 U.S.C. § 1337(l), the provisions of this Order shall not
apply to covered articles imported by and for the use of the United States, or imported for, and to
be used for, the United States with the authorization or consent of the Government.
6. 	The Commission may modify this Order in accordance with the procedures
described in section 210.76 of the Commission’s Rules of Practice and Procedure (19 C.F.R.
§ 210.76).
7. 	The Secretary shall serve copies of this Order upon each party of record in this
investigation that has retained counsel or otherwise provided a point of contact for electronic
service and upon CBP. While temporary remote operating procedures are in place in response to
COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel
or otherwise provided a point of contact for electronic service. Accordingly, pursuant to
Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission
orders that the Complainant complete service of this Order for any party without a method of
electronic service noted on the attached Certificate of Service and shall file proof of service on
the Electronic Document Information System (EDIS).
8. 	Notice of this Order shall be published in the Federal Register.
By order of the Commission.
Lisa R. Barton
Secretary to the Commission
Issued: 	April 20, 2020

CERTAIN ELECTRONIC NICOTINE DELIVERY SYSTEMS
AND COMPONENTS THEREOF
Inv. No. 337-TA-1139
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached ORDER has been served via EDIS
upon the Commission Investigative Attorney, Paul Gennari, Esq., and the following parties as
indicated, on April 20, 2020.
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Juul Labs, Inc.:
Daniel E. Yonan, Esq.
STERNE, KESSLER, GOLDSTEIN & FOX, P.L.L.C.
1100 New York Avenue, N.W.
Washington, DC 20005
Email: dyonan@sternekessler.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification of
Availability for Download
On Behalf of Respondents Eonsmoke, LLC:
Stephen M. Lobbin, Esq.
SML AVVOCATI P.C.
7538 Draper Avenue
San Diego, California 92037
Email: sml@smlavvocati.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification of
Availability for Download
Respondent:
XFire, Inc.
820 Summer Park Dr., Suite 700
Stafford, TX 77477
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by
Complainants

1
UNITED STATES INTERNATIONAL TRADE COMMISSION
WASHINGTON, DC
In the Matter of
CERTAIN ELECTRONIC NICOTINE
DELIVERY SYSTEMS AND
COMPONENTS THEREOF
Investigation No. 337-TA-1139
CEASE AND DESIST ORDER
IT IS HEREBY ORDERED THAT RESPONDENT XFire, Inc., 820 Summer Park
Dr., Suite 700, Stafford, TX 77477 (“Respondent”), cease and desist from conducting any of the
following activities in the United States: importing, selling, marketing, advertising, distributing,
transferring (except for exportation), and soliciting United States agents or distributors for, or
aiding and abetting other entities in the importation, sale for importation, sale after importation,
transfer (except for exportation), or distribution of nicotine vaporizer devices and the associated
pods sold for use with the devices, and components thereof that infringe one or more of claims 1,
2, 4, 5, 7, 8, 10, 12, 13, 16, 17, 20, and 21 of U.S. Patent No. 10,070,669 (“the ’669 patent”);
claims 1, 2, 3, 4, 9, 10, 11, 13, 14, 19, 20, 21, 24, 28, and 29 of U.S. Patent No. 10,076,139 (“the
’139 patent”); and claims 1, 2, 3, 4, 6, 9, 11, 12, 18, 19, 20, 21, 22, 23, and 27 of U.S. Patent No.
10,104,915 (“the ’915 patent”) (collectively, “the Asserted Patents”) in violation of section 337
of the Tariff Act of 1930, as amended (19 U.S.C. § 1337).

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I.
Definitions
As used in this order:
(A) 	“Commission” shall mean the United States International Trade Commission.
(B) 	“Complainant” shall mean Juul Labs, Inc., 560 20th Street, San Francisco, CA
94107.
(C) 	“Respondent” shall mean XFire, Inc., 820 Summer Park Dr., Suite 700, Stafford,
TX 77477.
(D) 	“Person” shall mean an individual, or any non-governmental partnership, firm,
association, corporation, or other legal or business entity other than Respondent
or its majority-owned or controlled subsidiaries, successors, or assigns.
(E) 	“United States” shall mean the fifty States, the District of Columbia, and Puerto
Rico.
(F) 	The terms “import” and “importation” refer to importation for entry for
consumption under the Customs laws of the United States.
(G) 	The term “covered products” shall mean nicotine vaporizer devices and the
associated pods sold for use with the devices, and components thereof that
infringe one or more of claims 1, 2, 4, 5, 7, 8, 10, 12, 13, 16, 17, 20, and 21 of
the ’669 patent; claims 1, 2, 3, 4, 9, 10, 11, 13, 14, 19, 20, 21, 24, 28, and 29 of
the ’139 patent; and claims 1, 2, 3, 4, 6, 9, 11, 12, 18, 19, 20, 21, 22, 23, and 27
of the ’915 patent. Covered products shall not include articles for which a
provision of law or license avoids liability for infringement.

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II.
Applicability
The provisions of this Cease and Desist Order shall apply to Respondent and to any of its
principals, stockholders, officers, directors, employees, agents, distributors, controlled (whether
by stock ownership or otherwise) and majority-owned business entities, successors, and assigns,
and to each of them, insofar as they are engaging in conduct prohibited by section III, infra, for,
with, or otherwise on behalf of, Respondent.
III.
Conduct Prohibited
The following conduct of Respondent in the United States is prohibited by this Order.
For the remaining term of the Asserted Patents, Respondent shall not:
(A) 	import or sell for importation into the United States covered products;
(B) 	market, distribute, sell, or otherwise transfer (except for exportation)
imported covered products;
(C) 	advertise imported covered products;
(D) 	solicit U.S. agents or distributors for imported covered products; or
(E) 	aid or abet other entities in the importation, sale for importation, sale
after importation, transfer, or distribution of covered products.
IV.
Conduct Permitted
Notwithstanding any other provision of this Order, specific conduct otherwise prohibited
by the terms of this Order shall be permitted if:
(A) 	in a written instrument, the owner of the Asserted Patents licenses or
authorizes such specific conduct; or

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(B) 	such specific conduct is related to the importation or sale of covered
products by or for the United States.
V.
Reporting
For purposes of this requirement, the reporting periods shall commence on January 1 of
each year and shall end on the subsequent December 31. The first report required under this
section shall cover the period from the date of issuance of this order through December 31, 2020.
This reporting requirement shall continue in force until such time as Respondent has truthfully
reported, in two consecutive timely filed reports, that it has no inventory of covered products in
the United States.
Within thirty (30) days of the last day of the reporting period, Respondent shall report to
the Commission: (a) the quantity in units and the value in dollars of covered products that it has
(i) imported and/or (ii) sold in the United States after importation during the reporting period,
and (b) the quantity in units and value in dollars of reported covered products that remain in
inventory in the United States at the end of the reporting period.
When filing written submissions, Respondent must file the original document
electronically on or before the deadlines stated above and submit eight (8) true paper copies to
the Office of the Secretary by noon the next day pursuant to section 210.4(f) of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.4(f)). Submissions should refer
to the investigation number (“Inv. No. 337-TA-1139”) in a prominent place on the cover pages
and/or the first page. (See Handbook for Electronic Filing Procedures,
https://www.usitc.gov/documents/handbook_on_filing_procedures.pdf). Persons with questions
regarding filing should contact the Secretary (202-205-2000). If Respondent desires to submit a
document to the Commission in confidence, it must file the original and a public version of the

5
original with the Office of the Secretary and must serve a copy of the confidential version on
Complainant’s counsel.1
Persons filing written submissions must file the original document electronically on or
before the deadlines stated above. The Commission’s paper filing requirements in 19 C.F.R.
210.4(f) are currently waived, pending resolution of the COVID-19 crisis. 85 Fed. Reg. 15798
(March 19, 2020).
Any failure to make the required report or the filing of any false or inaccurate report shall
constitute a violation of this Order, and the submission of a false or inaccurate report may be
referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001.
VI.
Record-Keeping and Inspection
(A) For the purpose of securing compliance with this Order, Respondent
shall retain any and all records relating to the sale, marketing, or
distribution in the United States of covered products, made and received
in the usual and ordinary course of business, whether in detail or in
summary form, for a period of three (3) years from the close of the fiscal
year to which they pertain.
(B) For the purposes of determining or securing compliance with this Order
and for no other purpose, subject to any privilege recognized by the
federal courts of the United States, and upon reasonable written notice by
the Commission or its staff, duly authorized representatives of the
1 Complainant must file a letter with the Secretary identifying the attorney to receive reports and
bond information associated with this Order. The designated attorney must be on the protective
order entered in the investigation.

6
Commission shall be permitted access and the right to inspect and copy,
in Respondent’s principal offices during office hours, and in the presence
of counsel or other representatives if Respondent so chooses, all books,
ledgers, accounts, correspondence, memoranda, and other records and
documents, in detail and in summary form, that must be retained under
subparagraph VI(A) of this Order.
VII.
Service of Cease and Desist Order
The Secretary shall serve copies of this Order upon each party of record in this
investigation that has retained counsel or otherwise provided a point of contact for electronic
service and upon CBP. While temporary remote operating procedures are in place in response to
COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel
or otherwise provided a point of contact for electronic service. Accordingly, pursuant to
Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission
orders that the Complainant complete service of this Order for any party without a method of
electronic service noted on the attached Certificate of Service and shall file proof of service on
the Electronic Document Information System (EDIS).
Respondent is ordered and directed to:
(A) 	Serve, within fifteen (15) days after the effective date of this Order, a
copy of this Order upon each of its respective officers, directors,
managing agents, agents, and employees who have any responsibility for
the importation, marketing, distribution, or sale of imported covered
products in the United States;
(B) 	Serve, within fifteen (15) days after the succession of any persons

7
referred to in subparagraph VII(A) of this order, a copy of the Order
upon each successor; and
(C) 	Maintain such records as will show the name, title, and address of each
person upon whom the Order has been served, as described in
subparagraphs VII(A) and VII(B) of this order, together with the date on
which service was made.
The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until
the expiration of the Asserted Patents.
VIII.
Confidentiality
Any request for confidential treatment of information obtained by the Commission
pursuant to Section V or VI of this order should be made in accordance with section 201.6 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
confidential treatment is sought, Respondent must provide a public version of such report with
confidential information redacted.
IX.
Enforcement
Violation of this order may result in any of the actions specified in section 210.75 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for
civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as
any other action that the Commission deems appropriate. In determining whether Respondent is
in violation of this order, the Commission may infer facts adverse to Respondent if it fails to
provide adequate or timely information.

8
X.
Modification
The Commission may amend this order on its own motion or in accordance with the
procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure (19
C.F.R. § 210.76).
XI.
Bonding
The conduct prohibited by section III of this order may be continued during the sixty (60)
day period in which this Order is under review by the United States Trade Representative, as
delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting
of a bond in the amount of one hundred (100) percent of the entered value of the covered
products. This bond provision does not apply to conduct that is otherwise permitted by section
IV of this Order. Covered products imported on or after the date of issuance of this Order are
subject to the entry bond as set forth in the exclusion order issued by the Commission and are not
subject to this bond provision.
The bond is to be posted in accordance with the procedures established by the
Commission for the posting of bonds by complainants in connection with the issuance of
temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying
documentation are to be provided to and approved by the Commission prior to the
commencement of conduct that is otherwise prohibited by section III of this Order. Upon the
Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all
parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on
Complainant’s counsel.2
2 See note 1 above.

9
The bond is to be forfeited in the event that the United States Trade Representative
approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court
of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final
determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the
products subject to this bond and provides certification to that effect that is satisfactory to the
Commission.
The bond is to be released in the event the United States Trade Representative
disapproves this Order and no subsequent order is issued by the Commission and approved (or
not disapproved, or no action is taken) by the United States Trade Representative, upon service
on Respondent of an order issued by the Commission based upon application therefore made by
Respondent to the Commission.
By order of the Commission.
Lisa R. Barton
Secretary to the Commission
Issued: 	April 20, 2020

CERTAIN ELECTRONIC NICOTINE DELIVERY SYSTEMS
AND COMPONENTS THEREOF
Inv. No. 337-TA-1139
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached ORDER has been served via EDIS
upon the Commission Investigative Attorney, Paul Gennari, Esq., and the following parties as
indicated, on April 20, 2020.
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Juul Labs, Inc.:
Daniel E. Yonan, Esq.
STERNE, KESSLER, GOLDSTEIN & FOX, P.L.L.C.
1100 New York Avenue, N.W.
Washington, DC 20005
Email: dyonan@sternekessler.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification of
Availability for Download
On Behalf of Respondents Eonsmoke, LLC:
Stephen M. Lobbin, Esq.
SML AVVOCATI P.C.
7538 Draper Avenue
San Diego, California 92037
Email: sml@smlavvocati.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification of
Availability for Download
Respondent:
XFire, Inc.
820 Summer Park Dr., Suite 700
Stafford, TX 77477
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by
Complainants

1
UNITED STATES INTERNATIONAL TRADE COMMISSION
WASHINGTON, DC
In the Matter of
CERTAIN ELECTRONIC NICOTINE
DELIVERY SYSTEMS AND
COMPONENTS THEREOF
Investigation No. 337-TA-1139
CEASE AND DESIST ORDER
IT IS HEREBY ORDERED THAT RESPONDENT Eonsmoke, LLC, 1500 Main
Ave., 2nd Floor, Clifton, NJ 07011 (“Respondent”), cease and desist from conducting any of the
following activities in the United States: importing, selling, marketing, advertising, distributing,
transferring (except for exportation), and soliciting United States agents or distributors for, or
aiding and abetting other entities in the importation, sale for importation, sale after importation,
transfer (except for exportation), or distribution of nicotine vaporizer devices and the associated
pods sold for use with the devices, and components thereof that infringe one or more of claims 1,
2, and 13 of U.S. Patent No. 10,070,669 (“the ’669 patent”); claims 12, 17 and 20 of U.S. Patent
No. 10,045,568 (“the ’568 patent”); claims 1, 2 and 4 of U.S. Patent No. 10,058,130 (“the ’130
patent”); and claims 1, 6 and 21 of U.S. Patent No. 10,104,915 (“the ’915 patent”) (collectively,
“the Asserted Patents”) in violation of section 337 of the Tariff Act of 1930, as amended (19
U.S.C. § 1337).

2
I.
Definitions
As used in this order:
(A) 	“Commission” shall mean the United States International Trade Commission.
(B) 	“Complainant” shall mean Juul Labs, Inc., 560 20th Street, San Francisco, CA
94107.
(C) 	“Respondent” shall mean Eonsmoke, LLC, 1500 Main Ave., 2nd Floor, Clifton,
NJ 07011.
(D) 	“Person” shall mean an individual, or any non-governmental partnership, firm,
association, corporation, or other legal or business entity other than Respondent
or its majority-owned or controlled subsidiaries, successors, or assigns.
(E) 	“United States” shall mean the fifty States, the District of Columbia, and Puerto
Rico.
(F) 	The terms “import” and “importation” refer to importation for entry for
consumption under the Customs laws of the United States.
(G) 	The term “covered products” shall mean nicotine vaporizer devices and the
associated pods sold for use with the devices, and components thereof that
infringe one or more of claims 1, 2, and 13 of the ’669 patent; claims 12, 17 and
20 of the ’568 patent; claims 1, 2 and 4 of the ’130 patent; and claims 1, 6 and 21
of the ’915 patent. Covered products shall not include articles for which a
provision of law or license avoids liability for infringement.

3
II.
Applicability
The provisions of this Cease and Desist Order shall apply to Respondent and to any of its
principals, stockholders, officers, directors, employees, agents, distributors, controlled (whether
by stock ownership or otherwise) and majority-owned business entities, successors, and assigns,
and to each of them, insofar as they are engaging in conduct prohibited by section III, infra, for,
with, or otherwise on behalf of, Respondent.
III.
Conduct Prohibited
The following conduct of Respondent in the United States is prohibited by this Order.
For the remaining term of the Asserted Patents, Respondent shall not:
(A) 	import or sell for importation into the United States covered products;
(B) 	market, distribute, sell, or otherwise transfer (except for exportation)
imported covered products;
(C) 	advertise imported covered products;
(D) 	solicit U.S. agents or distributors for imported covered products; or
(E) 	aid or abet other entities in the importation, sale for importation, sale
after importation, transfer, or distribution of covered products.
IV.
Conduct Permitted
Notwithstanding any other provision of this Order, specific conduct otherwise prohibited
by the terms of this Order shall be permitted if:
(A) 	in a written instrument, the owner of the Asserted Patents licenses or
authorizes such specific conduct; or

4
(B) 	such specific conduct is related to the importation or sale of covered
products by or for the United States.
V.
Reporting
For purposes of this requirement, the reporting periods shall commence on January 1 of
each year and shall end on the subsequent December 31. The first report required under this
section shall cover the period from the date of issuance of this order through December 31, 2020.
This reporting requirement shall continue in force until such time as Respondent has truthfully
reported, in two consecutive timely filed reports, that it has no inventory of covered products in
the United States.
Within thirty (30) days of the last day of the reporting period, Respondent shall report to
the Commission: (a) the quantity in units and the value in dollars of covered products that it has
(i) imported and/or (ii) sold in the United States after importation during the reporting period,
and (b) the quantity in units and value in dollars of reported covered products that remain in
inventory in the United States at the end of the reporting period.
When filing written submissions, Respondent must file the original document
electronically on or before the deadlines stated above and submit eight (8) true paper copies to
the Office of the Secretary by noon the next day pursuant to section 210.4(f) of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.4(f)). Submissions should refer
to the investigation number (“Inv. No. 337-TA-1139”) in a prominent place on the cover pages
and/or the first page. (See Handbook for Electronic Filing Procedures,
https://www.usitc.gov/documents/handbook_on_filing_procedures.pdf). Persons with questions
regarding filing should contact the Secretary (202-205-2000). If Respondent desires to submit a
document to the Commission in confidence, it must file the original and a public version of the

6
Commission shall be permitted access and the right to inspect and copy,
in Respondent’s principal offices during office hours, and in the presence
of counsel or other representatives if Respondent so chooses, all books,
ledgers, accounts, correspondence, memoranda, and other records and
documents, in detail and in summary form, that must be retained under
subparagraph VI(A) of this Order.
VII.
Service of Cease and Desist Order
The Secretary shall serve copies of this Order upon each party of record in this
investigation that has retained counsel or otherwise provided a point of contact for electronic
service and upon CBP. While temporary remote operating procedures are in place in response to
COVID-19, the Office of the Secretary is not able to serve parties that have not retained counsel
or otherwise provided a point of contact for electronic service. Accordingly, pursuant to
Commission Rules 201.16(a) and 210.7(a)(1) (19 CFR 201.16(a), 210.7(a)(1)), the Commission
orders that the Complainant complete service of this Order for any party without a method of
electronic service noted on the attached Certificate of Service and shall file proof of service on
the Electronic Document Information System (EDIS).
Respondent is ordered and directed to:
(A) 	Serve, within fifteen (15) days after the effective date of this Order, a
copy of this Order upon each of its respective officers, directors,
managing agents, agents, and employees who have any responsibility for
the importation, marketing, distribution, or sale of imported covered
products in the United States;
(B) 	Serve, within fifteen (15) days after the succession of any persons

7
referred to in subparagraph VII(A) of this order, a copy of the Order
upon each successor; and
(C) 	Maintain such records as will show the name, title, and address of each
person upon whom the Order has been served, as described in
subparagraphs VII(A) and VII(B) of this order, together with the date on
which service was made.
The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until
the expiration of the Asserted Patents.
VIII.
Confidentiality
Any request for confidential treatment of information obtained by the Commission
pursuant to Section V or VI of this order should be made in accordance with section 201.6 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
confidential treatment is sought, Respondent must provide a public version of such report with
confidential information redacted.
IX.
Enforcement
Violation of this order may result in any of the actions specified in section 210.75 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for
civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as
any other action that the Commission deems appropriate. In determining whether Respondent is
in violation of this order, the Commission may infer facts adverse to Respondent if it fails to
provide adequate or timely information.

9
The bond is to be forfeited in the event that the United States Trade Representative
approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court
of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final
determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the
products subject to this bond and provides certification to that effect that is satisfactory to the
Commission.
The bond is to be released in the event the United States Trade Representative
disapproves this Order and no subsequent order is issued by the Commission and approved (or
not disapproved, or no action is taken) by the United States Trade Representative, upon service
on Respondent of an order issued by the Commission based upon application therefore made by
Respondent to the Commission.
By order of the Commission.
Lisa R. Barton
Secretary to the Commission
Issued: 	April 20, 2020

CERTAIN ELECTRONIC NICOTINE DELIVERY SYSTEMS
AND COMPONENTS THEREOF
Inv. No. 337-TA-1139
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached ORDER has been served via EDIS
upon the Commission Investigative Attorney, Paul Gennari, Esq., and the following parties as
indicated, on April 20, 2020.
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Juul Labs, Inc.:
Daniel E. Yonan, Esq.
STERNE, KESSLER, GOLDSTEIN & FOX, P.L.L.C.
1100 New York Avenue, N.W.
Washington, DC 20005
Email: dyonan@sternekessler.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification of
Availability for Download
On Behalf of Respondents Eonsmoke, LLC:
Stephen M. Lobbin, Esq.
SML AVVOCATI P.C.
7538 Draper Avenue
San Diego, California 92037
Email: sml@smlavvocati.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification of
Availability for Download
Respondent:
XFire, Inc.
820 Summer Park Dr., Suite 700
Stafford, TX 77477
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by
Complainants

PUBLIC VERSION
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
Investigation No. 337-TA-1139
COMMISSION OPINION
The Commission has determined that there has been a violation of section 337 of the
Tariff Act of 1930, as amended, 19 U.S.C. § 1337, with respect to U.S. Patent Nos. 10,070,669
(“the ’669 patent”); 10,045,568 (“the ’568 patent”); 10,058,130 (“the ’130 patent”); and
10,104,915 (“the ’915 patent”) on review of the presiding administrative law judge’s (“ALJ”)
final initial determination (“FID”). This opinion sets forth the Commission’s reasoning in
support of that determination. In addition, the Commission adopts the findings in the FID that
are not inconsistent with this opinion. The Commission has also determined that the appropriate
form of relief is issuance of a limited exclusion order and cease and desist orders.
I. BACKGROUND
On December 13, 2018, the Commission instituted this investigation under section 337
based on a complaint filed on behalf of Juul Labs, Inc. (“JLI”) of San Francisco, California. 83
Fed. Reg. 64156-57 (Dec. 13, 2018). The complaint, as amended and supplemented, alleged
violations of section 337 based upon the importation into the United States, the sale for
importation, and the sale within the United States after importation of certain electronic nicotine
delivery systems (“ENDS”) and components thereof by reason of infringement of certain claims
of the ’669 patent, the ’568 patent, the ’130 patent, the ’915 patent (collectively “the Asserted
Patents”), and U.S. Patent No. 10,076,139 (“the ’139 patent”). Id. The Commission’s notice of
In the Matter of
CERTAIN ELECTRONIC NICOTINE
DELIVERY SYSTEMS AND
COMPONENTS THEREOF

PUBLIC VERSION
2
investigation named twenty-one respondents, including Eonsmoke, LLC (“Eonsmoke”) of
Clifton, New Jersey and XFire, Inc. (“XFire”) of Stafford, Texas. Id. at 64157. The Office of
Unfair Import Investigations (“OUII”) was also a party to the investigation. Id.
JLI and the Commission were unable to serve respondent Keep Vapor Electronic Tech.
Co., Ltd. of Shenzhen, China despite multiple attempts at service. The FID stated that JLI does
not request any relief against this respondent. See FID at 2 n.1.
On February 25, 2019, the ALJ granted JLI’s motion to amend the complaint and notice
of investigation to change the name of respondent Bo Vaping of Garden City, New York to
ECVD/MMS Wholesale LLC of Garden City, New York and the name of respondent MMS
Distribution LLC of Rock Hill, New York to MMS/ECVD LLC of Garden City, New York.
See Order No. 8 (Feb. 25, 2019), not rev’d by Comm’n Notice (Mar. 25, 2019).
On February 28, 2019, the ALJ granted a motion to amend the complaint and notice of
investigation to change the name of respondent Limitless Mod Co. of Simi Valley, California to
Limitless MOD, LLC of Simi Valley, California. See Order No. 10 (Feb. 28, 2019), not rev’d
by Comm’n Notice (Mar. 27, 2019).
On May 21, 2019, the ALJ granted a motion to amend the complaint and notice of
investigation to change the name of respondent Ziip Lab Co., Ltd. of Guangdong Province,
China to SS Group Holdings of Guangdong Province, China. See Order No. 26 (May 21, 2019),
not rev’d by Comm’n Notice (June 14, 2019).
Before the evidentiary hearing, JLI settled with the following eight respondents: J Well
France S.A.S. of Paris, France; ECVD/MMS Wholesale LLC; MMS/ECVD LLC; The Electric
Tobacconist, LLC of Boulder, Colorado; ALD Group Limited of Guangdong Province, China;
Flair Vapor LLC of South Plainfield, New Jersey; Shenzhen Joecig Technology Co., Ltd. of

PUBLIC VERSION
3
Guangdong Province, China; and Myle Vape Inc. of Jamaica, New York. See Order No. 13
(Mar. 12, 2019), not rev’d by Comm’n Notice (Apr. 5, 2019); Order No. 16 (Mar. 21, 2019), not
rev’d by Comm’n Notice (Apr. 4, 2019); Order No. 31 (July 30, 2019), not rev’d by Comm’n
Notice (Aug. 23, 2019); Order No. 32 (July 30, 2019), not rev’d by Comm’n Notice (Aug. 23,
2019); Order No. 33 (July 30, 2019), not rev’d by Comm’n Notice (Aug. 23, 2019); Order No.
34 (July 30, 2019), not rev’d by Comm’n Notice (Aug. 23, 2019).
In addition, the Commission terminated the investigation as to the following six
respondents based on a consent order stipulation and the issuance of a consent order: Vapor
Hub International, Inc. of Simi Valley, California; Limitless MOD, LLC; Asher Dynamics, Inc.
of Chino, California; Ply Rock of Chino, California; Infinite-N Technology Limited of
Guangdong Province, China; and King Distribution LLC of Elmwood Park, New Jersey. See
Order No. 9 (Feb. 27, 2019), not rev’d by Comm’n Notice (Mar. 27, 2019); Order No. 11 (Feb.
28, 2019), not rev’d by Comm’n Notice (Mar. 26, 2019); Order No. 18 (Mar. 28, 2019), not
rev’d by Comm’n Notice (Apr. 11, 2019); Order No. 20 (Apr. 2, 2019), not rev’d by Comm’n
Notice (Apr. 15, 2019).
On April 23, 2019, the ALJ found respondent XFire in default pursuant to Commission
Rule 210.16(b), 19 C.F.R. § 210.16(b). See Order No. 22 (Apr. 23, 2019), not rev’d by
Comm’n Notice (May 16, 2019). At the time XFire was found in default, it was accused of
infringing claims 1, 2, 4, 5, 7, 8, 10, 12, 13, 16, 17, 20, and 21 of the ’669 patent; claims 1, 2, 3,
4, 9, 10, 11, 13, 14, 19, 20, 21, 24, 28, and 29 of the ’139 patent; and claims 1, 2, 3, 4, 6, 9, 11,
12, 18, 19, 20, 21, 22, 23, and 27 of the ’915 patent (collectively, “the Asserted XFire Claims”).
Also, prior to the evidentiary hearing, the ALJ granted JLI’s motion for partial
termination of the investigation with respect to allegations of infringement as to all asserted

PUBLIC VERSION
4
claims of the ’139 patent and certain asserted claims of the other Asserted Patents. See Order
No. 36 (Aug. 8, 2019), not rev’d by Comm’n Notice (Sep. 5, 2019). As a result, only the
following claims remain at issue in the investigation: claims 1, 2, and 13 of the ’669 patent;
claims 12, 17, and 20 of the ’568 patent; claims 1, 2, and 4 of the ’130 patent; and claims 1, 6,
and 21 of the ’915 patent.
Only five respondents participated in the evidentiary hearing: SS Group Holdings; ZLab
S.A. of Punta del Este – Maldonado, Uruguay; Shenzhen Yibo Technology Co. Ltd. Of
Guangdong Province, China (collectively, “the Ziip Respondents”); Vapor 4 Life Holdings, Inc.
of Northbrook, Illinois (“V4L”); and Eonsmoke.
On August 5, 2019, one day before the prehearing conference, the ALJ issued an initial
determination (“ID”) (Order No. 35), granting JLI’s motion for summary determination of
importation, infringement, and domestic industry. The ALJ found that JLI was entitled to
summary determination of importation with respect to the Ziip Respondents and their accused
products; Eonsmoke and its accused products1 ; and V4L and certain V4L accused products. See
Order No. 35 at 4-11 (Aug. 5, 2019). Citing to a stipulation between JLI and the Ziip
Respondents, the ALJ found regarding infringement that “the question of whether Ziip accused
products contain or perform each limitation of asserted claims is moot.” Id. at 11. The ALJ did
not specifically state whether summary determination of infringement as to the Ziip
Respondents was denied or granted nor the reasoning supporting grant or denial of the motion
as to this issue. Id.
An evidentiary hearing was held from August 6-7, 2019.
1 Eonsmoke’s accused products include “the Eonsmoke device, the Eonsmoke v2.0
device, Eonsmoke (Eon) pod, and the 4X pod.” See FID at 9.

PUBLIC VERSION
5
On September 4, 2019 the Commission reviewed Order No. 35 in part. See Comm’n
Notice (Sept. 4, 2019). Specifically, the Commission reviewed the ALJ’s analysis as to
infringement and the statement regarding mootness on page 11 of the ID. Id. The Commission
remanded to the ALJ for clarification on this issue and as to whether the ID grants or denies
summary determination that the Ziip Respondents infringe the claims of the Asserted Patents.
Id.
In response to the Commission’s September 4, 2019 Notice, the ALJ clarified that Order
No. 35 denied summary determination of infringement as to the Ziip Respondents because that
issue was moot in light of the stipulation between JLI and the Ziip Respondents. See Remand
of Order No. 35 (Oct. 10, 2019).
On November 19, 2019, the ALJ granted motions to terminate the investigation as to the
Ziip Respondents and V4L based on settlement agreements. See Order Nos. 38 and 39 (Nov.
19, 2019), not rev’d by Comm’n Notice (Dec. 16, 2019). Accordingly, only respondent
Eonsmoke remained active in this investigation.
On December 12, 2019, the ALJ granted JLI’s motion to strike portions of Eonsmoke’s
posthearing brief. See Order No. 40 (Dec. 12, 2019). Specifically, these portions relate to the
issue of invalidity of asserted claim 4 of the ’915 patent, which was not addressed by
Respondents’ expert or in their prehearing briefs. Id. at 3-5.
On December 13, 2019, the ALJ issued the FID finding a violation of section 337 by
Eonsmoke with respect to claims 1, 2, and 13 of the ’669 patent; claims 12, 17, and 20 of the
’568 patent; claims 1, 2, and 4 of the ’130 patent; and claims 1, 6, and 21 of the ’915 patent

PUBLIC VERSION
6
(collectively, “the Asserted Eonsmoke Claims”).2 No petitions for review were filed, which
means each party abandoned all issues decided adversely to that party. See 19 C.F.R.
§ 210.43(b)(4). No public interest submissions were filed in response to the Federal Register
notice seeking such submissions. See 85 Fed. Reg. 3720 (Jan. 22, 2020).
On February 13, 2020, the Commission issued a notice determining to review sua sponte
the FID in part and, on review, to adopt certain of the FID’s findings.3 85 Fed. Reg. 9803-06
(Feb. 20, 2020). The notice also requested briefing on remedy, bonding, and the public interest.
Id. First, the Commission determined to review and, on review, declined to adopt the discussion
of the validity of element [c] of claim 12 of the ’669 patent on pages 50 and 55 of the FID.
Second, with respect to the economic prong of the domestic industry requirement, the
Commission determined to review the discussion of the quantitative significance of JLI’s
contract manufacturers’ investments in the last paragraph on page 272 of the FID. Third, also
with respect to economic prong of the domestic industry requirement, the Commission
determined to review the discussion of Warranty and Customer Support and Regulatory
Compliance on pages 265-66 of the FID. The Commission determined not to review the
remainder of the FID, including the majority of the FID’s domestic industry analysis, which is
sufficient to support the FID’s finding that JLI has satisfied the domestic industry requirement
under subparagraphs 337(a)(3)(A) and (B) with respect to the ’669, ’568, ’130, and ’915
2 Discussion of the Asserted Patents, the accused products, and the domestic industry
products can be found in the FID at pages 9-13, 55-56, 117-18, 174, and 233.
3 With respect to issues under review, “the Commission may affirm, reverse, modify, set
aside or remand for further proceedings, in whole or in part, the initial determination of the
administrative law judge.” 19 C.F.R. § 210.45(c). The Commission also “may take no position
on specific issues or portions of the initial determination,” and “may make any finding or
conclusions that in its judgment are proper based on the record in the proceeding.” Id.

PUBLIC VERSION
7
patents. Accordingly, the Commission found a violation of section 337 by reason of respondent
Eonsmoke’s importation of certain electronic nicotine delivery systems and components thereof
that infringe one or more of the Asserted Eonsmoke Claims. The Commission also found that
complainant JLI is entitled to relief against defaulted respondent XFire pursuant to 19 U.S.C. §
1337(g)(1).
On January 27, 2020, JLI and OUII filed their respective initial submissions on remedy,
bonding, and the public interest. 4 On March 5, 2020, JLI and OUII filed their respective reply
submissions.5 No other party filed a submission before the Commission.
II. DISCUSSION
A. The FID’s Finding on the Quantitative Significance of JLI’s Contract
Manufacturers’ Investments
As explained below, the Commission declines to adopt the discussion of the quantitative
significance of JLI’s contract manufacturers’ investments in the last paragraph on page 272 of
the FID. In particular, the FID finds that “JLI and its contractors’ U.S. investments in the DI
Products are significant from a quantitative perspective,” in part because percent of
FID at 270-71,
272. However, the FID suggests that also conducts activities in relating
to the JUUL system. For example, the FID explains that conducts activity in
4 See Complainant’s Statement on the Issues of Remedy, Public Interest, and Bonding,
EDIS Doc ID 703618 (Feb. 27, 2020) (“CSub”); Brief of the Office of Unfair Import
Investigations on Issues Under Review and on Remedy, the Public Interest, and Bonding, EDIS
Doc ID 703614 (Feb. 27, 2020) (“IASub”).
5 See Complainant’s Reply to Brief of the Office of Unfair Import Investigations on
Issues Under Review and on Remedy, the Public Interest, and Bonding, EDIS Doc ID 704165
(Mar. 5, 2020) (“CReply”); Reply of the Office of Unfair Import Investigations on Issues Under
Review and on Remedy, the Public Interest, and Bonding, EDIS Doc ID 704164 (Mar. 5, 2020)
(“IAReply”).

PUBLIC VERSION
8
filling the pods with e-liquid in the United States. See id. at 261, 272. The FID also explains
that the same contractor, , along with other contractors located in ,
assemble empty pods in . See id. at 260. If activities relating to the
JUUL system are indeed conducted in both and the U.S., then not all of
facilities and employees can support a finding of quantitative significance.
The Commission finds that the remainder of the FID’s domestic industry analysis is
sufficient to support the FID’s finding that JLI has satisfied the domestic industry requirement
under subparagraphs 337(a)(3)(A) and (B) with respect to the ’669, the ’568, the ’130, and the
’915 patents. Accordingly, the Commission affirms the FID’s finding that JLI has satisfied the
economic prong of the domestic industry requirement with respect to the Asserted Patents but
declines to adopt the last paragraph on page 272 of the FID.
B. The FID’s Discussion of JLI’s Warranty and Customer Support and
Regulatory Compliance Activities
The Commission also determined to review the discussion of JLI’s Warranty and
Customer Support and Regulatory Compliance activities on pages 265-66 of the FID.
Specifically, JLI engages in “a variety of customer support and warranty activities related to the
JUUL system in the United States” including
. Id. at 265. JLI’s domestic activities also
include investments in complying with the U.S. Food and Drug Administration regulations
relating to ENDS products. See id. at 265-66. In particular, “JLI’s clinical research and
medical affairs departments plan, execute, and analyze the results of
studies designed to support JLI’s compliance and youth prevention efforts” in the
United States. CX-0017C at Q85 (citing CX-0014C at Q43); see id. at 259, 265-66.

PUBLIC VERSION
9
On review, the Commission has determined to affirm the FID’s discussion of JLI’s
warranty and customer support and regulatory compliance activities on pages 265-66 of the
FID. The Commission in the past has recognized similar types of investments in the United
States relating to the domestic industry product. See, e.g., Certain Marine Sonar Imaging
Devices, Including Downscan and Sidescan Devices, Products Containing the Same, and
Components Thereof, Inv. No. 337-TA-921, Comm’n Op. at 53-54 (Dec. 1, 2015) (recognizing
investments in the form of technical customer support, warranty and repair work); Certain
Strontium-Rubidium Radioisotope Infusion Systems, and Components Thereof Including
Generators, Inv. No. 337-TA-1110, Comm’n Op. at 40, 42 (Dec. 11, 2019) (recognizing
investments in FDA regulatory approval activities relating to the domestic industry product). 6
III. REMEDY, BONDING, AND THE PUBLIC INTEREST
The RD recommends that, in the event the Commission determines that a violation of
section 337 has occurred, the Commission should issue a limited exclusion order (“LEO”) and
cease and desist orders (“CDO”) directed to each of respondents Eonsmoke and XFire and set
the amount of bond to be posted during the period of Presidential review at 100 percent of the
entered value of the infringing products. See FID at 273-79. The RD finds that the record in
6 Commissioner Kearns observes that FDA regulatory compliance is required for a
nicotine delivery system from any source. The same can be said with regard to warranty and
customer support activities, which a supplier of a consumer product of any origin can be
expected to carry out. To the extent that certain activities needed to market a product in the
United States as a practical matter can only be performed in the United States, these activities
may not on their own distinguish a complainant’s activities from those of an importer. He finds
it unclear from evidence submitted whether (or which of) JLI’s activities in the areas of FDA
regulatory compliance and warranty and customer support are of a nature that can only be
conducted in the United States. See, e.g., CX-0014C (Danaher), CX-0017C (Mulhern).
However, he need not resolve that issue as he finds the other evidence on record cited by the
ALJ to be sufficient to demonstrate that JLI satisfied the domestic industry requirement of
section 337(a)(3)(A) and (B).

PUBLIC VERSION
10
this investigation contains no evidence that a remedial order would adversely affect the public
health and welfare, competitive conditions in the United States economy, the production of like
or directly competitive articles in the United States, or United States consumers. See id. at 280-
81.
A. 	Remedy
The Commission has “broad discretion in selecting the form, scope, and extent of the
remedy.” Viscofan, S.A. v. U.S. Int’1 Trade Comm’n, 787 F.2d 544, 548 (Fed. Cir. 1986).
1. 	Limited Exclusion Order
Section 337(d)(1) provides that “[i]f the Commission determines, as a result of an
investigation under this section, that there is a violation of this section, it shall direct that the
articles concerned, imported by any person violating the provision of this section, be excluded
from entry into the United States, unless, after considering the [public interest], it finds that such
articles should not be excluded from entry.” 19 U.S.C. § 1337(d)(1). Section 337(g)(1)
provides that, when a complaint seeks an LEO against a party that has been found in default, the
Commission “shall, upon request, issue an exclusion from entry . . . limited to that person
unless” consideration of the public interest factors dictates that “such exclusion . . . should not
issue.” 19 U.S.C. § 1337(g)(1).
JLI and OUII agree that the Commission should issue an LEO directed at Eonsmoke and
XFire. While JLI and OUII agree on the scope of the LEO directed at Eonsmoke, they proposed
different scopes with respect to the LEO directed at XFire. Compare IASub Ex. B at 1 with
CSub Ex. A at 2. In particular, JLI submitted a proposed LEO that covered the same claims
with respect to both respondents while OUII submitted a proposed LEO covering different sets

PUBLIC VERSION
11
of claims for each of the respondents.7 Id. OUII proposed that the scope of the LEO for XFire
correspond to the claims asserted against XFire in the complaint. IAReply at 2-3; Amended
Complaint, ¶ 190. In its reply, JLI approves the use of OUII’s proposed LEOs. CReply at 1.
Based on the evidence in the record, the Commission determines that the appropriate
remedy in this investigation is an LEO directed to each of respondents Eonsmoke and XFire.
See FID at 273. There is no dispute that the LEO directed to Eonsmoke should prohibit the
unlicensed entry of “nicotine vaporizer devices and the associated pods sold for use with the
devices, and components thereof,” 83 Fed. Reg. 64157, that infringe one or more of the
Asserted Eonsmoke Claims (i.e., claims 1, 2, and 13 of the ’669 patent; claims 12, 17, and 20 of
the ’568 patent; claims 1, 2, and 4 of the ’130 patent; and claims 1, 6, and 21 of the ’915 patent).
JLI is also entitled to relief against defaulted respondent XFire pursuant to 19 U.S.C.
§ 1337(g)(1). As noted above, JLI’s reply approves the use of OUII’s proposed LEO. The
Commission finds that the LEO directed to XFire should be limited to the claims asserted in the
complaint as proposed by OUII and as later agreed to by JLI. Accordingly, the LEO directed to
XFire should prohibit the unlicensed entry of “nicotine vaporizer devices and the associated
pods sold for use with the devices, and components thereof” that infringe one or more of the
Asserted XFire Claims (i.e., claims 1, 2, 4, 5, 7, 8, 10, 12, 13, 16, 17, 20, and 21 of the ’669
patent; claims 1, 2, 3, 4, 9, 10, 11, 13, 14, 19, 20, 21, 24, 28, and 29 of the ’139 patent; and
claims 1, 2, 3, 4, 6, 9, 11, 12, 18, 19, 20, 21, 22, 23, and 27 of the ’915 patent).8
7 OUII’s proposed LEO directed to XFire covered the Asserted XFire Claims whereas
JLI’s proposed LEO directed to XFire covered the Asserted Eonsmoke Claims.
8 We remind the complainant that parties are to state their positions on remedy in their
initial submissions pursuant to the Commission’s Federal Register notice requesting briefing on
remedy. 85 Fed. Reg. at 9806. Here, complainant switched its position between its initial

PUBLIC VERSION
12
2. 	Cease and Desist Orders
Section 337(f)(1) provides that in addition to, or in lieu of, the issuance of an exclusion
order, the Commission may issue a CDO as a remedy for violation of section 337. See 19
U.S.C. § 1337(f)(1). CDOs are generally issued when, with respect to the imported infringing
products, respondents maintain commercially significant inventories in the United States or
have significant domestic operations that could undercut the remedy provided by an exclusion
order. See, e.g., Certain Table Saws Incorporating Active Injury Mitigation Technology &
Components Thereof (“Table Saws”), Inv. No. 337-TA-965, Comm’n Op. at 4-6 (Feb. 1, 2017);
Certain Protective Cases & Components Thereof, Inv. No. 337-TA-780, USITC Pub. No. 4405,
Comm’n Op. at 28 (Nov. 19, 2012) (citing Certain Laser Bar Code Scanners & Scan Engines,
Components Thereof & Prods. Containing Same, Inv. No. 337-TA-551, Comm’n Op. at 22
(June 24, 2007)). Complainants bear the burden on this issue. “A complainant seeking a cease
and desist order must demonstrate, based on the record, that this remedy is necessary to address
the violation found in the investigation so as to not undercut the relief provided by the exclusion
order.” Table Saws, Comm’n Op. at 5 (citing Certain Integrated Repeaters, Switches,
Transceivers, & Prods. Containing Same, Inv. No. 337-TA-435, USITC Pub. No. 3547 (Oct.
2002), Comm’n Op. at 27 (Aug. 16, 2002); see also H.R. REP. No. 100-40, at 160 (1987)).
Section 337(g)(1) provides that the Commission “shall, upon request, issue . . . a cease
and desist order . . . limited to that person unless” consideration of the public interest factors
dictates that “such . . . an order should not issue.” 19 U.S.C. § 1337(g)(1). In the case of named
submission and its reply submission as to the patent claims for which it sought a remedy against
XFire. Given the circumstances here where XFire was found in default, we find it appropriate
to issue the LEO and CDO as described herein.

PUBLIC VERSION
13
respondents in the United States who have been found in default or who have not participated in
the investigation, the Commission has inferred commercially significant domestic inventories or
significant domestic operations with respect to the infringing articles. See, e.g., Certain
Earpiece Devices and Components Thereof, Inv. No. 337-TA-1121, Comm’n Op. at 41-42
(Nov. 8, 2019); Certain Hand Dryers and Housing for Hand Dryers, Inv. No. 337-TA-1015,
Comm’n Op. at 24 (Oct. 30, 2017); Certain Mobile Device Holders and Components Thereof,
Inv. No. 337-TA-1028, Comm’n Op. at 27 (Mar. 22, 2018); Certain Agricultural Tractors,
Lawn Tractors, Riding Lawnmowers, and Components Thereof, Inv. No. 337-TA-486, Comm’n
Op. at 18 (Aug. 19, 2003); Certain Rare-Earth Magnets and Magnetic Materials and Articles
Containing Same, Inv. No. 337-TA-413, USITC Pub. No. 3307, Comm’n Op. at 17-18 (May
2000).
JLI and OUII agree that both Eonsmoke and XFire should be subject to CDOs.
However, OUII asserts that, as with JLI’s proposed LEO, JLI’s proposed CDOs for both
respondents do not correctly reflect the claims that were asserted against XFire at the time it
defaulted in this investigation, and improperly subjects XFire to claims in the ‘568 patent,
which was never asserted against XFire. IAReply at 3.
There is no dispute that Eonsmoke’s inventory of the accused products is commercially
significant. FID at 274 (citing CX-0017C at Q313). Specifically, the record evidence shows
that “Eonsmoke’s inventory of pods on March 8, 2019 was valued at between $2 million and $5
million, which equates to approximately 133,422 to 333,556 packs of pods at retail prices.” Id.
at 274-75 (citing CX-0756C; CX-0757C; CX-0851). Therefore, the record evidence supports
issuing a CDO prohibiting Eonsmoke from further importing, selling, and distributing products

PUBLIC VERSION
14
in the United States that infringe one or more of the Asserted Eonsmoke Claims.9 See 19 U.S.C.
§ 1337(f)(1).
As noted above, XFire has been found by the Commission to be in default and, thus, the
prerequisites of section 337(g)(1) are satisfied with respect to XFire. As the RD points out,
JLI’s amended complaint alleges that XFire imported infringing devices and pods and that it
“maintain[s] a commercially-significant inventory of the XFire devices and pods in the United
States.” FID at 275 (citing Amended Complaint ¶¶ 147-49, 162, 192). Therefore, pursuant to
section 337(g)(1), the Commission has presumed the facts alleged in the complaint to be true
and has determined to issue a CDO directed to XFire, as JLI requests, provided the public
interest will not be adversely affected by the issuance of the order. 10 See 19 U.S.C.
9 When the presence of infringing domestic inventory or domestic operations is asserted
as the basis for a CDO under section 337(f)(1), Commissioner Schmidtlein does not adopt the
view that the inventory or domestic operations needs to be “commercially significant” in order
to issue the CDO. See, e.g., Certain Magnetic Tape Cartridges and Components Thereof, Inv.
No. 337-TA-1058, Comm’n Op. at 65, n.24 (Mar. 25, 2019); Table Saws, Comm’n Op. at 6-7,
n.2. In Commissioner Schmidtlein’s view, the presence of some infringing domestic inventory
or domestic operations, regardless of its commercial significance, provides a basis to issue a
CDO under section 337(f)(1). Id. Accordingly, Commissioner Schmidtlein supports issuance
of the CDO against Eonsmoke under section 337(f)(1) due to the presence of some infringing
domestic inventory, regardless of the commercial significance.
10 Commissioner Schmidtlein supports issuance of the CDO against XFire, the
respondent in default, for the reasons provided in her separate views in Certain Electric Skin
Care Devices, Brushes and Chargers Therefore, and Kits Containing the Same. See Inv. No.
337-TA-959, Comm’n Op., Separate Views of Chairman Schmidtlein (Feb. 13, 2017) (public
version). Specifically, because remedial relief as to XFire is governed by section 337(g)(1), she
finds that the mandatory “shall, upon request, issue” language in section 337(g)(1) requires the
Commission to issue the requested CDO against XFire. See id at 2-5; see also Certain
Industrial Automation Systems and Components Thereof Including Control Systems,
Controllers, Visualization Hardware, Motion and Motor Control Systems, Networking
Equipment, Safety Devices, and Power Supplies, Inv. No. 337-TA-1074, Comm’n Op.,
Dissenting Views of Commissioner Schmidtlein (April 23, 2019) (public version).

PUBLIC VERSION
15
§ 1337(g)(1). The CDO prohibits XFire from further importing, selling, and distributing
products in the United States that infringe one or more of the Asserted XFire Claims.
The Commission declines to include JLI’s two edits to OUII’s proposed CDOs because
the edits are generally not found in CDOs and JLI has made no showing that these provisions
are necessary. First, JLI’s edit proposes that provisions of the CDOs apply to respondents’
“contractors” and “joint ventures.” CReply, Ex. 1. JLI’s remedy brief, however, provides no
evidence or argument that these entities should be included among the entities that are bound by
the terms of the CDOs. Commission CDOs typically include language providing that the
provisions of the CDO shall apply to the respondent and to any of its principals, stockholders,
officers, directors, employees, agents, distributors, controlled (whether by stock ownership or
otherwise) and majority-owned business entities, successors, and assigns, and to each of them,
insofar as they are engaging in prohibited conduct for, with, or otherwise on behalf of,
respondent. In short, JLI has provided no justification for why this standard language is
insufficient in scope to address the violations in this investigation. Moreover, JLI’s amended
complaint makes no allegations with respect to any contractors or joint ventures in connection
with these respondents. In fact, the only discussion of contractors in the amended complaint is
with respect to JLI’s domestic industry activities.
Second, JLI proposes to include the model names of the respondents’ accused products
in the definition of “covered products” although its proposal does not limit the covered products
to only the accused products. CReply, Ex. 1. Commission orders generally do not name
specific infringing products because such information can be easily found in the record. Such is
the case here. See, e.g., Amended Complaint, ¶¶ 113 (Eonsmoke accused products), 115 (XFire
accused products); FID at 9, 35. JLI has provided no justification for deviating from the

PUBLIC VERSION
16
Commission’s long-standing practice of declining to name specific models in its exclusion
orders. Cf. Certain Ground Fault Circuit Interrupters and Products Containing Same, Inv. No.
337-TA-615, Comm’n Op. at 27 (rejecting respondents’ request to limit exclusion orders to
specific model numbers in order to prevent circumvention).
B. 	Public Interest
Section 337 requires the Commission, upon finding a violation of section 337, to issue
an LEO “unless, after considering the effect of such exclusion upon the public health and
welfare, competitive conditions in the United States economy, the production of like or directly
competitive articles in the United States, and United States consumers, it finds that such articles
should not be excluded from entry.” 19 U.S.C. § 1337(d)(l). Similarly, the Commission must
consider these public interest factors before issuing a CDO. 19 U.S.C. § 1337(f)(1). The same
holds for remedial orders issued pursuant to section 337(g)(1). 19 U.S.C. § 1337(g)(1).
Under appropriate facts and circumstances, the Commission may determine that no
remedy should issue because of the adverse impacts on the public interest. See, e.g., Certain
Fluidized Supporting Apparatus & Components Thereof, Inv. Nos. 337-TA-182/188, USITC
Pub. 1667, Comm’n Op. at 1-2, 23-25 (Oct. 1984) (finding that the public interest warranted
denying complainant’s requested relief). Moreover, when the circumstances of a particular
investigation require, the Commission has tailored its relief in light of the statutory public
interest factors. For example, the Commission has allowed continued importation for ongoing
medical research, exempted service parts, grandfathered certain infringing products, and
delayed the imposition of remedies to allow affected third-party consumers to transition to non-
infringing products. E.g., Certain Microfluidic Devices, Inv. No. 337-TA-1068 Comm’n Op. at
1, 22-48, 53-54 (analyzing the public interest, discussing applicable precedent, and ultimately
issuing a tailored LEO and a tailored CDO); Certain Road Milling Machines & Components

PUBLIC VERSION
17
Thereof, Inv. No. 337-TA-1067, Comm’n Op. at 32-33 (July 18, 2019) (exempting service
parts); Certain Baseband Processor Chips & Chipsets, Transmitter, & Receiver (Radio) Chips,
Power Control Chips, & Prods. Containing Same, Including Cellular Tel. Handsets, 337-TA-
543, USITC Pub. No. 4258, Comm’n Op. at 150-51 (Oct. 2011) (grandfathering certain
products); Certain Personal Data & Mobile Comm’n Devices & Related Software, 337-TA-710,
USITC Pub. No. 4331, Comm’n Op., at 72-73, 80-81 (June 2012) (delaying imposition of
remedy).
The statute requires the Commission to consider and make findings on the public interest
in every case in which a violation is found regardless of the quality or quantity of public interest
information supplied by the parties. 19 U.S.C. §§ 1337(d)(l), (f)(l), (g)(1). Thus, the
Commission publishes a notice inviting the parties as well as interested members of the public
and interested government agencies to gather and present evidence on the public interest at
multiple junctures in the proceeding. See 19 C.F.R. § 210.50(a)(4).
The ALJ finds that the record in this investigation contains no evidence that a remedial
order would adversely affect the public health and welfare, competitive conditions in the United
States economy, the production of like or directly competitive articles in the United States, or
United States consumers. See FID at 280-81. No respondent briefed the statutory public
interest factors before the ALJ, although the issue of public interest was delegated to the ALJ in
the notice of investigation. Id. at 280. In addition, no third party responded to the
Commission’s Notice requesting submissions from the public with respect to the public interest.
See 85 Fed. Reg. 3720 (Jan. 22, 2020).
JLI and OUII agree that there are no public health, safety or welfare concerns implicated
by the LEO and CDOs. FID at 280-81. According to OUII, “there is no evidence that

PUBLIC VERSION
18
Respondents’ accused products have any unique public health benefits” and “there is no
evidence that any remedial orders issued in this investigation would adversely affect the public
health and welfare.” IASub at 14. JLI and OUII also agree that JLI has adequate capacity to
meet any increase in demand if the accused products are excluded. Id.; CSub at 10. In addition,
JLI asserts that the remedial orders will positively impact consumers because JLI’s products
“are made with the highest quality materials and are subject to stringent quality-control
measures to ensure a reliable and consistent user experience” and the orders “will benefit adult
consumers . . . by removing from the market products that are made with unknown materials in
unknown locations by unknown methods.” CSub at 11.
The record in this investigation contains no evidence that issuance of an LEO or CDO
would adversely affect the public health and welfare, competitive conditions in the United
States economy, the production of like or directly competitive articles in the United States, or
United States consumers. See 19 U.S.C. §§ 1337(d)(1), (f)(1), (g)(1). In addition, JLI has a
domestic industry and it can readily replace the products at issue with their own product.
Accordingly, based on the record of this investigation, the Commission determines that the
public interest does not preclude the issuance of remedial orders.
C. 	Bonding
If the Commission enters an exclusion order or a cease and desist order, a respondent
may continue to import and sell its products during the 60-day period of Presidential review
under a bond in an amount determined by the Commission to be “sufficient to protect the
complainant from any injury.” 19 U.S.C. § 1337(j)(3); see also 19 C.F.R. § 210.50(a)(3).
When reliable price information is available in the record, the Commission has often set the
bond in an amount that would eliminate the price differential between the domestic product and
the imported, infringing product. See Certain Microsphere Adhesives, Processes for Making

PUBLIC VERSION
19
Same, & Prods. Containing Same, Including Self-stick Repositionable Notes, Inv. No. 337-TA-
366, USITC Pub. No. 2949, Comm’n Op. at 24 (Jan. 16, 1996). The Commission also has used
a reasonable royalty rate to set the bond amount where a reasonable royalty rate could be
ascertained from the evidence in the record. See, e.g., Certain Audio Digital-to-Analog
Converters & Prods. Containing Same, Inv. No. 337-TA-499, Comm’n Op. at 25 (Mar. 3,
2005). Where the record establishes that the calculation of a price differential is impractical or
there is insufficient evidence in the record to determine a reasonable royalty, the Commission
has imposed a 100 percent bond. See, e.g., Certain Liquid Crystal Display Modules, Prods.
Containing Same, & Methods Using the Same, Inv. No. 337-TA-634, Comm’n Op. at 6-7 (Nov.
24, 2009). The complainant, however, bears the burden of establishing the need for a bond.
Certain Rubber Antidegradants, Components Thereof & Prods. Containing Same, Inv. No. 337-
TA-533, USITC Pub. No. 3975, Comm’n Op. at 40 (July 21, 2006).
JLI seeks imposition of a bond in the amount of 100 percent of entered value during the
period of Presidential review “due to the complexities and wide range of [price] differentials”
for the accused products. CSub at 4-8. The RD agrees and, in particular, finds that the evidence
shows: (i) there is direct competition between participating respondents’ accused products and
JLI’s JUUL system, which will result in continuing injury to JLI in the form of displaced sales;
(ii) participating respondents have directly targeted JLI and the JUUL system with their
marketing; (iii) publicly available pricing data even on the same respondents’ websites is, at
times, inconsistent; (iv) participating respondents consistently provide discounts or coupons for
their products beyond the publicly available price; and (v) JLI’s domestic industry products and
accused products are sold in a variety of configurations, making direct pricing comparisons
difficult. See FID at 276-279; IASub at 16-17.

PUBLIC VERSION
20
The Commission adopts the RD’s findings and has determined to set the bond in the
amount of 100 percent of the entered value of the infringing products during the period of
Presidential review. As the RD finds, the record shows the complexities and wide range of
price differentials between Eonsmoke’s accused products and JLI’s JUUL system, which
supports a bond of 100 percent. See FID at 276-279; CSub at 4-7 (citing CX-0017C at QQ316-
25, 328, 334-46). Eonsmoke does not challenge the RD’s recommendation and did not provide
briefing on the appropriate bond. With regard to XFire, it was found in default in this
investigation and provided no discovery relating to pricing or royalty information. The
Commission generally sets the bond at 100 percent for defaulting respondents. See Certain
Neodymuim-Iron-Boron Magnets, Magnet Alloys, & Prods. Containing Same, Inv. No. 337-TA-
372, Comm’n Op. at 15 (May 1996).
IV. CONCLUSION
For the foregoing reasons, the Commission affirms the discussion of Warranty and
Customer Support and Regulatory Compliance on pages 265-66 of the FID and declines to
adopt the discussion of the quantitative significance of JLI’s contract manufacturers’
investments in the last paragraph on page 272 of the FID. The Commission determines that the
appropriate form of relief is an LEO and CDOs directed to Eonsmoke and XFire. The
Commission finds that the public interest does not preclude issuance of these orders. The
Commission sets the bond during the period of Presidential review in the amount of 100 percent
of the entered value of the infringing products.

PUBLIC VERSION
21
By order of the Commission.
Issued: 	May 5, 2020
Lisa R. Barton
Secretary to the Commission

CERTAIN ELECTRONIC NICOTINE DELIVERY SYSTEMS
AND COMPONENTS THEREOF
Inv. No. 337-TA-1139
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached Opinion, Commission has been
served via EDIS upon the Commission Investigative Attorney, Paul Gennari, Esq., and the
following parties as indicated, on May 05, 2020.
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Juul Labs, Inc.:
Daniel E. Yonan, Esq.
STERNE, KESSLER, GOLDSTEIN & FOX, P.L.L.C.
1100 New York Avenue, N.W.
Washington, DC 20005
Email: dyonan@sternekessler.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification of
Availability for Download
On Behalf of Respondents Eonsmoke, LLC:
Stephen M. Lobbin, Esq.
SML AVVOCATI P.C.
7538 Draper Avenue
San Diego, California 92037
Email: sml@smlavvocati.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification of
Availability for Download
Respondent:
XFire, Inc.
820 Summer Park Dr., Suite 700
Stafford, TX 77477
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Service to Be
Completed by
Complainants

UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN ELECTRONIC NICOTINE Investigation No. 337-TA-1139
DELIVERY SYSTEMS AND
COMPONENTS THEREOF
NOTICE OF A COMMISSION DETERMINATION TO REVIEW THE
FINAL INITIAL DETERMINATION IN PART AND TO AFFIRM THE
FINDING OF A VIOLATION OF SECTION 337;
SCHEDULE FOR FILING WRITTEN SUBMISSIONS ON
REMEDY, THE PUBLIC INTEREST AND BONDING;
EXTENSION OF THE TARGET DATE
AGENCY: U.S. International Trade Commission.
ACTION: Notice.
SUMMARY: Notice is hereby given that the U.S. Intemational Trade Commission has
determined to review the presiding administrative law judge’s (“ALJ”) final initial determination
(“ID”) in part. On review, the Commission affirms the ID’s finding of a violation of section 337
in the above-captioned investigation. The Commission requests written submissions from the
parties, interested government agencies, and interested persons on the issues of remedy, the
public interest, and bonding conceming respondent Eonsmoke, LLC (“Eonsmoke”) and
defaulting respondent XFire, Inc. (“XFire”). The Connnission has also determined to extend the
target date for completion of the above-captioned investigation to Monday, April 20, 2020.
FOR FURTHER INFORMATION CONTACT: Cathy Chen, Office of the General Counsel,
U.S. International Trade Commission, 500 E Street SW, Washington, D.C. 20436, telephone
202-205-2392. Copies of non-confidential documents filed in connection with this investigation
are or will be available for inspection during official business hours (8:45 a.m. to 5:15 p.m.) in
the Office of the Secretary, U.S. Intemational Trade Commission, 500 E Street, SW,
Washington, D.C. 20436, telephone (202) 205-2000. General infonnation concerning the
Commission may also be obtained by accessing its Intemet server at htgps://www.usitc.gov. The
public record for this investigation may be viewed on the Commission’s electronic docket
(EDIS) at htmsi//edisusitc. gov. Hearing-impaired persons are advised that information on this
matter can be obtained by contacting the Commission’s TDD terminal on (202) 205-1810.
SUPPLEMENTARY INFORMATION: On December 13, 2018, the Conunission instituted
this investigation under section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. 1337,
based on a complaint filed on behalf of Juul Labs, Inc. (“JLI”) of San Francisco, Califomia. 83

FR 64156 (Dec. 13, 2018). The complaint, as amended and supplemented, alleges violations of
section 337 based upon the importation into the United States, the sale for importation, and the
sale within the United States after importation of certain electronic nicotine delivery systems and
components thereof by reason of infringement of certain claims of U.S. Patent Nos.: 10,070,669
(“the ’669 patent”); 10,076,139 (“the ’139 patent”); 10,045,568 (“the ’568 patent”); 10,058,130
(“the ’130 patent”); and 10,104,915 (“the ’915 patent") (collectively, “the Asserted Patents”). Id.
The Commission’s notice of investigation named twenty-one respondents, including Eonsmoke
of Clifton, New Jersey and XFire of Stafford, Texas. Id. at 64157. The Office of Unfair Import
Investigations (“OUII”) is also a party to the investigation.
On February 25, 2019, the ALJ granted JLI’s motion to amend the complaint and notice
of investigation to change the name of respondent Bo Vaping of Garden City, New York to
ECVD/MMS Wholesale LLC of Garden City, New York and the name of respondent MMS
Distribution LLC of Rock Hill, New York to MMS/ECVD LLC of Garden City, New York. See
Order No. 8 (Feb. 25, 2019), not rev ’d by Comm’n Notice (Mar. 25, 2019).
On February 28, 2019, the ALJ granted a motion to amend the complaint and notice of
investigation to change the name of respondent Limitless Mod Co. of Simi Valley, Califomia to
Limitless MOD, LLC of Simi Valley, California. See Order No. 10 (Feb. 28, 2019), not rev ’dby
Comm’n Notice (Mar. 27, 2019).
Before the evidentiary hearing, JLI settled with the following eight respondents: J Well
France S.A.S. of Paris, France; ECVD/MMS Wholesale LLC; MMS/ECVD LLC; The Electric
Tobacconist, LLC of Boulder, Colorado; ALD Group Limited of Guangdong Province, China;
Flair Vapor LLC of South Plainfield, New Jersey; Shenzhen Joecig Techonology Co., Ltd. of
Guangdong Province, China; and Myle Vape Inc. of Jamaica, New York. See Order No. 31
(July 30, 2019), not rev ’a'by Comm’n Notice (Aug. 23, 2019); Order No. 16 (Mar. 21, 2019),
not rev ’d by Comm’n Notice (Apr. 4, 2019); Order No. 33 (July 30, 2019), not rev ‘dby Comm’n
Notice (Aug. 23, 2019); Order No. 13 (Mar. 12, 2019), not rev ’dby Comm’n Notice (Apr. 5,
2019); Order No. 34 (July 30, 2019), not rev ‘dby Comm’n Notice (Aug. 23, 2019); Order No.
32 (July 30, 2019), not rev ’dby Comm’n Notice (Aug. 23, 2019).
In addition, the investigation terminated as to the following six respondents based on a
consent order stipulation and the issuance of a consent order: Vapor Hub International, Inc. of
Simi Valley, California; Limitless MOD, LLC; Asher Dynamics, Inc. of Chino, California; Ply
Rock of Chino, California; Infinite-N Technology Limited of Guangdong Province, China; and
King Distribution LLC of Elmwood Park, New Jersey. See Order No. 9 (Feb. 27, 2019), not
rev ’d by Comm’n Notice (Mar. 27, 2019); Order No. 11 (Feb. 28, 2019), not rev ’dby Comm’n
Notice (Mar. 26, 2019); Order No. 18 (Mar. 28, 2019), not rev ’dby Comm’n Notice (Apr. 11,
2019); Order No. 20 (Apr. 2, 2019), not rev ’dby Cornm’n Notice (Apr. 15, 2019).
On April 23, 2019, the ALJ found respondent XFire in default pursuant to Commission
Rule 210.16(b), 19 CFR 210.16(b). See Order No. 22 (Apr. 23, 2019), not rev ’dby Comm’n
Notice (May 16, 2019).
2

Also, prior to the evidentiary hearing, the ALJ granted JLI’s motion for partial
termination of the investigation with respect to allegations of infringement as to all asserted
claims of the ’139 patent and certain asserted claims of the other asserted patents. See Order No.
36 (Aug. 8, 2019), not rev ’d by Comm’n Notice (Sep. 5, 2019). As a result, the following
claims remain at issue in the investigation: claims 1, 2, and 13 of the ’669 patent; claims 12, 17,
and 20 of the ’568 patent; claims 1, 2, and 4 of the ’13Opatent; and claims 1, 6, and 21 of the
’9l5 patent (collectively, “the Asserted Claims”).
ILI and the Commission were unable to serve respondent Keep Vapor Electronic Tech.
Co., Ltd. of Shenzhen, China despite multiple attempts at service. The final ID states that JLI
does not request any relief against this respondent. See ID at 2 n.1.
On May 21, 2019, the ALJ granted a motion to amend the complaint and notice of
investigation to change the name of respondent Ziip Lab Co., Ltd. of Guangdong Province,
China to SS Group Holdings of Guangdong Province, China. See Order No. 26 (May 21, 2019),
not rev ’d by Comm’n Notice (June 14, 2019).
Only five respondents participated in the evidentiary hearing: SS Group Holdings; ZLab
S.A. of Punta del Este —Maldonado, Uruguay; Shenzhen Yibo Technology Co. Ltd. Of
Guangdong Province, China (collectively, “the Ziip Respondents”); Vapor 4 Life Holdings, Inc.
ofNo1-thbrook, Illinois (“V4L”); and Eonsmoke.
On August 5, 2019, one day before the prehearing conference, the ALJ issued an ID
(Order No. 35), granting JLI’s motion for summary determination of importation,
infringement, and domestic industry. The ALJ found that JLI was entitled to summary
determination of importation with respect to the Ziip Respondents and their accused products;
Eonsmoke and its accused products; and V4L and certain V4L accused products. See Order
No. 35 at 4-11 (Aug. 5, 2019). Citing to a stipulation between JLI and the Ziip Respondents,
the ALJ stated in his infringement analysis with respect to the Ziip Respondents’ accused
products that “the question of whether Ziip accused products contain or perfonn each
limitation of asserted claims is moot.” Id. at 11. The ALJ did not specifically state whether
summary determination of infringement as to the Ziip Respondents was denied or granted nor
the reasoning supporting grant or denial of the motion as to this issue. Id.
An evidentiary hearing was held from August 6-7, 2019.
On September 4, 2019 the Commission reviewed Order No. 35 in part. Specifically,
the Commission reviewed the ALJ’s analysis as to infringement and a statement regarding
mootness on page 11 of the ID. The Commission remanded to the ALJ for clarification on
this issue and as to whether the ID grants or denies summary determination that the Ziip
Respondents infringe the Asserted Patents. See Comm’n Notice (Sep. 4, 2019).
In response to the Commission’s September 4, 2019 Notice, the ALJ clarified that Order
No. 35 denied summary determination of infringement as to the Ziip Respondents because that
issue was moot in light of the stipulation between JLI and the Ziip Respondents. See Remand of
Order No. 35 (Oct. 10,2019).
3

On November 19, 2019, the ALJ granted motions to terminate the investigation as to the
Ziip Respondents and V4L based on settlement agreements. See Order Nos. 38 and 39 (Nov. 19,
2019), not rev ‘dby Comm’n Notice (Dec. 16, 2019). Accordingly, only respondent Eonsmoke
remains active in this investigation.
On December 12, 2019, the ALJ granted JLI’s motion to strike portions of the Ziip
Respondents’ and Eonsmoke’s posthearing briefs. See Order No. 40 (Dec. 12, 2019).
Specifically, these portions relate to the issue of invalidity of asserted claim 4 of the ’915 patent,
which was not addressed by Respondents’ expert or in their prehearing briefings. Id. at 3-5.
On December 13, 2019, the ALJ issued a combined final ID a.ndrecommended
determination (“RD”), finding a violation of section 337 by respondent Eonsmoke. Specifically,
the final ID finds, inter alia, that ILI satisfied the importation requirement as to Eonsmoke’s
accused products; that JLI has shown Eonsmoke‘s accused products infringe the Asserted
Claims; that JLI has satisfied the domestic industry requirement with respect to the Asserted
Patents; and that the Asserted Claims have not been shown to be invalid. In addition, in the
event the Commission finds a violation of section 337, the RD recommends that the Commission
issue a limited exclusion order (“LEO”) and cease and desist orders (“CDO”) directed at
Eonsmoke and defaulting respondent XFire, and impose a 100 percent bond during the period of
Presidential review.
No petitions for review were filed, which means each party has abandoned all issues
decided adversely to that party. See 19 CFR 2l0.43(b)(4).
Having reviewed the record of this investigation, including the final ID, the Commission
has detennined to sua sponte review the final ID in part. 19 CFR 210.44. Specifically, the
Commission has determined to review and, on review, decline to adopt the discussion of the
validity of element [c] of claim 12 of the ’669 patent on pages 50 and 55 of the final ID. The
Commission has also determined to review the discussion of Warranty and Customer Support
and Regulatory Compliance on pages 265-266 of the final ID and the discussion of the
quantitative significance of JLI’s contract manufacturers’ investments in the last paragraph on
page 272 of the final ID. The Commission has detennined not to review the remainder of the
final ID, including the other portions of the ID’s domestic industry analysis, which are sufficient
to support the ID’s finding that JLI has satisfied the domestic industry requirement under
subparagraphs 337(a)(3)(A) and (B) with respect to the Asserted Patents. Accordingly, the
Commission finds a violation of section 337 by reason of Eonsmoke’s importation of electronic
nicotine delivery systems and components thereof that infringe one or more of claims 1, 2, and
13 of the ’669 patent; claims 12, 17, and 20 of the ’568 patent; claims l, 2, and 4 of the ’130
patent; and claims 1, 6, and 21 of the ’9l5 patent. The Commission also finds that JLI is entitled
to relief against defaulting respondent XFire pursuant to 19 U.S.C. l337(g)(l).
The Commission has determined to extend the target date for completion of the
investigation to Monday, April 20, 2020.
4

In connection with the final disposition of this investigation, the statute authorizes
issuance of (1) an order that could result in the exclusion of the subject articles from entry into
the United States, and/or (2) cease and desist order(s) that could result in the respondent(s) being
required to cease and desist from engaging in unfair acts in the importation and sale of such
articles. Accordingly, the Commission is interested in receiving written submissions that address
the fonn of remedy, if any, that should be ordered. If a party seeks exclusion of an article from
entry into the United States for purposes other than entry for consmnption, the party should so
indicate and provide information establishing that activities involving other types of entry either
are adversely affecting it or likely to do so. For background, see Certain Devicesfor Connecting
Computers via Telephone Lines, Inv. No. 337-TA—360,USITC Pub. No. 2843, Comm’n Op. at 7
10 (Dec. 1994). In addition, if a party seeks issuance of any cease and desist orders, the written
submissions should address that request in the context of recent Commission opinions, including
those in Certain Arrowheads with Deploying Blades and Components Thereof and Packaging
Therefor, lnv. No. 337-TA-977, Comm’n Op. (Apr. 28, 2017) and Certain Electric Skin Care
Devices, Brushes and Chargers Therefor, and Kits Containing the Same, lnv. No. 337-TA-959,
Comm’n Op. (Feb. 13, 2017). Specifically, if Complainant seeks a cease and desist order against
a respondent, the written submissions should respond to the following requests:
1. Please identify with citations to the record any information regarding
commercially significant inventory in the United States as to each
respondent against whom a cease and desist order is sought. If
Complainant also relies on other significant domestic operations that
could undercut the remedy provided by an exclusion order, please
identify with citations to the record such information as to each
respondent against whom a cease and desist order is sought.
2. ln relation to the infringing products, please identify any infonnation
in the record, including allegations in the pleadings, that addresses the
existence of any domestic inventory, any domestic operations, or any
sales-related activity directed at the United States for each respondent
against whom a cease and desist order is sought.
3. Please discuss any other basis upon which the Commission could enter
a cease and desist order.
The statute requires the Commission to consider the effects of any remedy upon the
public interest. The public interest factors the Commission will consider include the effect that
an exclusion order would have on (1) the public health and welfare, (2) competitive conditions in
the U.S. economy, (3) U.S. production of articles that are like or directly competitive with those
that are subject to investigation, and (4) U.S. consumers. The Commission is therefore interested
in receiving written submissions that address the aforementioned public interest factors in the
context of this investigation.
If the Commission orders some form of remedy, the U.S. Trade Representative, as
delegated by the President, has 60 days to approve, disapprove, or take no action on the
Commission’s determination. See Presidential Memorandum of July 21, 2005, 70 FR 43251
(July 26, 2005). During this period, the subject articles would be entitled to enter the United
5

States under bond, in an amount determined by the Commission and prescribed by the Secretary
of the Treasury. The Commission is therefore interested in receiving submissions concerning the
amount of the bond that should be imposed if a remedy is ordered.
WRITTEN SUBMISSIONS: Parties to the investigation, interested govemment
agencies, and any other interested parties are encouraged to file written submissions on the issues
of remedy, the public interest, and bonding. Such initial submissions should include views on
the recommended determination by the ALJ on remedy and bonding.
Complainant and the COII1Il'liSSlOI1 Investigative Attorney are also requested to identify
the fonn of remedy sought and to submit proposed remedial orders for the Commission’s
consideration in their initial written submissions. Complainant is further requested to state the
dates that the Asserted Patents expire, the HTSUS numbers under which the accused products
are imported, and to supply the identification information for all known importers of the products
at issue in this investigation. The written submissions and proposed remedial orders must be
filed no later than close of business on February 27, 2020. Reply submissions must be filed no
later than the close of business on March 5, 2020. No further submissions on these issues will
be permitted unless otherwise ordered by the Commission.
Persons filing written submissions must file the original document electronically on or
before the deadlines stated above and submit 8 true paper copies to the Office of the Secretary by
noon the next day pursuant to Commission Rule 2l0.4(f), 19 C.F.R. 2l0.4(f). Submissions
should refer to the investigation number (Inv. No. 337-TA-1139) in a prominent place on the
cover page and/or the first page. (See Handbook for Electronic Filing Procedures,
https://www.usitc.gov/documents/handb00k_0n_/iling_pr0cedures.pd1'). Persons with questions
regarding filing should contact the Secretary, (202) 205-2000.
Any person desiring to submit a document to the Commission in confidence must request
confidential treatment. All such requests should be directed to the Secretary to the Commission
and must include a filll statement of the reasons why the Conunission should grant such
treatment. See 19 CFR 201.6. Documents for which confidential treatment by the Commission
is properly sought will be treated accordingly. A redacted non-confidential version of the
docmnent must also be filed simultaneously with any confidential filing. All information,
including confidential business information and documents for which confidential treatment is
properly sought, submitted to the Commission for purposes of this investigation may be
disclosed to and used: (i) by the Commission, its employees and Offices, and contract personnel
(a) for developing or maintaining the records of this or a related proceeding, or (b) in intemal
investigations, audits, reviews, and evaluations relating to the programs, personnel, and
operations of the Commission including under 5 U.S.C. Appendix 3; or (ii) by U.S. government
employees and contract personnel, solely for cybersecurity purposes. All contract personnel will
sign appropriate nondisclosure agreements. All nonconfidential written submissions will be
available for public inspection at the Office of the Secretary and on EDIS.
6

The authority for the C0mmissi0n’s determination is contained in section 337 of the
Tariff Act of 1930, as amended, 19 U.S.C. 1337, and in Part 210 ofthe Commissi0n’s Rules of
Practice and Procedure, 19 CFR Part 210.
By order of the Commission.
W???
Lisa R. Barton
Secretary to the Commission
Issued: February 13, 2020
7

CERTAIN ELECTRONIC NICOTINE DELIVERY SYSTEMS 	Inv. No. 337-TA-1139
AND COMPONENTS THEREOF
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached NOTICE has been served by hand
upon the Commission Investigative Attomey, Paul Gennari, Esq., and the following parties as
indicated, on February 13, 2020.
On Behalf of Complainants Juul Labs, Inc.:
Daniel E. Yonan, Esq.
STERNE, KESSLER, GOLDSTEIN & FOX, P.L.L.C.
1100 New York Avenue, N.W.
Washington, DC 20005
On Behalf of Respondents Eonsmoke, LLC,
Stephen M. Lobbin, Esq.
SML AVVOCATI P.C.
7538 Draper Avenue
San Diego, California 92037
Respondents:
Keep Vapor Electronic Tech. Co., Ltd.
Block D, XinLong Techno Park
ShaJing Town, Bao An District
Shenzhen, China
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
I
U Via Hand Delivery
Cl Via Express Delivery
E{Via First Class Mail
E] Other:
El Via Hand Delivery
5}/ia ExpressDelivery	Via First Class Mail
D Other:
U Via Hand Delivery
Cl Via Express Delivery
B4/la First Class Mail
II Other:

PUBLIC VERSION
UNITED STATES INTERNATIONAL TRADE COMMISSION
WASHINGTON, D.C
In the Matter of
CERTAIN ELECTRONIC NICOTINE
DELIVERY SYSTEMS AND
COMPONENTS THEREOF
Inv. No. 337-TA-1139
FINAL INITIAL DETERMINATION
Administrative Law Judge David P. Shaw
Pursuant to the notice of investigation, 83 Fed. Reg. 64156 (Dec. 13, 2018), this is
the Initial Determination in Certain Electronic Nicotine Delivery Systems and
Components Thereof, United States International Trade Commission Investigation No.
337-TA-1139.
It is held that a violation of section 337 (19 U.S.C. § 1337) has occurred with
respect to U.S. Patent No. 10,070,669; U.S. Patent No. 10,045,568; U.S. Patent No.
10,058,130; and U.S. Patent No. 10,104,915.

I.
PUBLIC VERSION
TABLE OF CONTENTS
Background ............................................................................ .
A.
B.
C.
D.
Institution of the Investigation;'Procedural History ...................... .
The Parties ................. ... ........ ........ .................................. .
The Accused Products ...................................................... .
Asserted Patents and Technological Background ....................... ..
1
1
8
9
10
II. 	Jurisdiction and Importation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .. 	13
III. 	General Principles of Applicable Law . . . .. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .. . . . . 	14
IV. 	United States Patent No. 10 ,070,669 . .... . .. . ... . .. ... . . . . .. .. . ... . .... . .......... .... 	25
V.
A. 	Claim Construction .. . .. . .. .. . .. .. . .. . .. . . .. .. . . .. .. . . .. .. . .. . . .. . .. .. . .. . .. .. . 	27
B.
C.
D.
Infringement ................................................................... .
Validity ......... . ................................ ... ............................ .
Domestic Industry (Technical Prong) ....................................... .
United States Patent No. 10,045,568 ................................................. .
A. 	Claim Construction ........................................................... .
34
42
55
64
66
B. 	Infringement . .. .. . . .. ... . .. ..... ... . ... ... . .. ... . . . ... . . . ... .. . . .. . .. .. . . .... ... 	74
C. 	Validity ...................................... ·..... .. .. . . .. .. . . . . . .. ... .. . . .. .. ... 	85
D. 	Domestic Industry (Technical Prong)....................... . ................ 	117
VI. 	United States Patent No. 10,058,130 . .. ... .. .. .. . . ... . . .. .. . . .. .. .. .. . .. .......... .... 	126
A. 	Claim Construction ...... :.... .. . .. . . . ... . ..... ... . .. .. . . . . . .. . .. . . . . ...... .... 	128
B.
C.
Infringement ................................................................... .
Validity ......................................................................... .
135
143

PUBLIC VERSION
D. 	Domestic Industry (Technical Prong) ....................................... . 	174
VII. 	United States Patent No. 10 ,104,915 	. .. .. . . . . . . . .. . . .. .. . . .. . .. .. . . .. ... .. ..... .. .. ... 	183
A. 	Claim Construction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .. 	187
B. 	Infringement ... . . . .. . ... .. . .. . . .. . .. . .. ... .. . . . . ... . . . . .. .. . . ...... ...... .. . .... 	193
C. 	Validity . . . . . . . . . . . . . . . . . ... . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .. 	204
D. 	Domestic Industry (Technical Prong)........................................ 	233
VIII. 	Other Issues . . . . . . . . .................................. . ............. . ....... .. .......... ... .. 	243
IX. 	Domestic Industry (Economic Prong).. . ....... ... . .............. . ........... . ........ 	258
X. 	Remedy and Bonding . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 	273
XI. 	Conclusions of Law ............ . .... ... . .......................... ·.................... .. 	282
XII. 	Initial Determination and Order . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .. . . . . . . . . . .. 	282
ii

PUBLIC VERSION
The following abbreviations may be used in this Initial Determination:
ALJ 	Administrative Law Judge
CDX 	- 	Complainant's Demonstrative Exhibit
CPX 	- 	Complainant's Physical Exhibit
ex 	Complainant's Exhibit
Dep. 	- 	Deposition
EDIS 	- 	Electronic Document Imaging System
JPX 	Joint Physical Exhibit
JX 	Joint Exhibit
P.H. 	Prehearing
RDX 	- 	Respondents' Demonstrative Exhibit
RPX 	- 	Respondents' Physical Exhibit
RWS 	- 	Rebuttal Witness Statement
RX 	Respondents' Exhibit
Tr. 	Transcript
ws 	Witness Statement
iii

PUBLIC VERSION
I. 	Background
A. 	Institution of the Investigation; Procedural History
By publication of a notice in the Federal Regi ster on December 13 , 2018,
pursuant to subsection (b) of section 337 of the Tariff Act of 1930, as amended, the
Commission instituted this investigation to determine:
[W]hether there is a violation of subsection (a)(l )(B) of
section 337 in the importation into the United States, the
sale for importation, or the sale within the United States
after importation of certain products identified in paragraph
(2) by reason of infringement of one or more of claims 1, 2,
4, 5, 7, 3, 10, 12, 13 , 16, 17, 20, and 21 of the ' 669 patent
[U.S. Patent No. 10,070,669] ; claims 1-4, 9-11 , 13 , 14, 19-
21 , 24, 28, and 29 of the ' 139 patent [U.S. Patent No.
10,076,139]; claims 1-3, 5-9, 12 , and 17-20 of the ' 568
patent [U.S. Patent No . 10,045,568] ; claims 1, 2, 4-6, 8-10,
16, 19, 21 , and 27 of the ' 130 patent [U.S. Patent No.
10,058,130]; and claims 1-4, 6, 9, 11 , 12, 18-23, and 27 of
the '915 patent [U.S. Patent No. 10,104,915]; and whether
an industry in the United States exists as required by
subsection (a)(2)of section 337.
83 Fed. Reg. 64156 (Dec. 13 , 2018).
Pursuant to section 210.l0(b)(l) of the Commission' s Rules of Practice and
Procedure, 19 C.F .R. 210.1 0(b )(1 ):
Id
[T]he plain language description of the accused products or
category of accused products, which defmes the scope of
the investigation, is "nicotine vaporizer devices and the
associated pods sold for use with the devices, and
components thereof[.]"
The complainant is Juul Labs, Inc. of San Francisco, California. The named
respondents were:
1. 	J Well France S.A.S. of Paris, France

PUBLIC VERSION
2. 	Bo Vaping, of Garden City, New York
3. 	MMS Distribution LLC of Rock Hill, New York
4. 	The Electric Tobacconist, LLC of Boulder, Colorado
5. 	Vapor 4 Life Holdings, Inc. ("V4L") of Northbrook, Illinois
6. 	Eonsmoke, LLC of Clifton, New Jersey
7. 	ZLab S.A. of Maldonado, Uruguay
8. 	Ziip Lab Co., Limited of Guangdong Province, China
9. 	Shenzhen Yibo Technology Co., Ltd. ofGuangdong Province, China
10. XFire, Inc. of Stafford, Texas
11. ALD Group Limited of Guangdong Province, China
12. Flair Vapor LLC of South Plainfield, New Jersey
13. Shenzhen Joecig Technology Co., Ltd. of Guangdong Province, China
14. Myle Vape Inc. of Jamaica, New York
15. Vapor Hub International, Inc. of Simi Valley, California
16. Limitless Mod Co. of Simi Valley, California
17. Asher Dynamics, Inc. of Chino, California
18. Ply Rock of Chino, California
19. Infinite-N Technology Limited of Guangdong Province, China
20. King Distribution LLC of Elmwood Park, New Jersey
21. Keep Vapor Electronic Tech. Co., Ltd. 1 of Shenzhen, China
The Office of Unfair Import Investigations ("OUII" or "Staff') is a party to this
investigation. Id.
The target date for completion of this investigation was initially set at fifteen
months, i.e., March 13, 2020. See Order No. 3 (Jan. 30, 2019). Accordingly, the original
due date for the final initial determination on violation was November 13, 2019.
1 JLI states, "Despite multiple attempts at service, both the Commission and JLI were
unable to serve Respondent Keep Vapor, who has not entered an appearance or
participated in this Investigation." .Compl. Br. at 5. JLI does not request any relief
against Keep Vapor.
2

PUBLIC VERSION ·
On March 25, 2019, the Commission determined not to review an initial
determination granting complainant's motion to amend the complaint and notice of
investigation. See Order No. 8 (Feb. 25, 2019), ajf'd, Commission Decision Not to
Review an Initial Determination Granting Complainant's Motion to Amend the
Complaint and Notice of Investigation. On March 26, 2019, the Commission determined
not to review an initial determination granting a joint motion for partial termination of the
investigation as to certain respondents based on consent order stipulations and proposed
consent orders. See Order No. 11 (Feb. 28, 2019), ajf'd, Commission Decision Not to
Review an Initial Determination Granting a Joint Motion for Partial Termination of the
Investigation As to Certain Respondents Based on Consent Order Stipulations and
Proposed Consent Orders.
On March 27, 2019, the Commission determined not to review an initial
determination granting-in-part a joint motion to amend the complaint and notice of
investigation. See Order No. 10 (Feb. 28, 2019), ajf'd, Commission Decision Not to
Review an Initial Determination Granting-in-Part a Joint Motion to Amend the
Complaint and Notice oflnvestigation. On March 27, 2019, the Commission determined
not to review an initial determination granting a motion for partial termination of the
investigation as to respondent Vapor Hub International Inc. based on a consent order
stipulation and a proposed consent order. See Order No. 9 (Feb. 27, 2019), ajf'd,
Commission Decision Not to Review an Initial Determination Granting a Joint Motion
for Partial Termination of the Investigation As to One Respondent Based on a Consent
Order Stipulation and a Proposed Consent Order.
On April 4, 2019, the Commission determined not to review an initial
3

PUBLIC VERSION
determination granting a joint motion for partial termination of the investigation as to
respondent The Electric Tobacconist, LLC based on settlement. See Order No! 16 (Mar.
21, 2019), ajf'd, Commission Decision Not to Review an Initial Determination Granting
a Joint Motion for Partial Termination of the Investigation As to a Respondent Based on
Settlement. On April 5, 2019, the Commission determined not to review an initial
determination granting an amended joint motion for partial termination of the
investigation as to respondent Flair Vapor, LLC based on settlement. See Order No. 13
(Mar. 12, 2019), ajf'd, Commission Decision Not to Review an Initial Determination
Granting an Amended Joint Motion for Partial Termination of the Investigation As to a
Respondent Based on Settlement.
On April 11, 2019, the Commission determined not to review an initial
determination granting an unopposed motion for partial termination of the investigation
as to respondent Infinite-N Technology Limited based on a consent order stipulation and
a proposed consent order. See Order No. 18 (Mar. 28, 2019), ajf'd, Commission
Decision Not to Review an Initial Determination Granting an Unopposed Motion for
Partial Termination of the Investigation As to a Respondent Based on a Consent Order
Stipulation and a Proposed Consent Order. On April 15 , 2019, the Commission
determined not to review an initial determination granting a joint motion for partial
termination of the investigation as to respondent King Distribution LLC based on a
consent order. See Order No. 20 (Apr. 2, 2019), aff'd, Commission Decision Not to
Review an Initial Determination Granting a Joint Motion for Partial Termination of the
Investigation As to a Respondent Based on a Consent Order.
4

PUBLIC VERSION
On May 16 , 2019, the Commission determined not to review an initial
determination finding respondent XFire, Inc. in default. See Order No. 22 (Apr. 23,
2019), a.ff'd, Commission Decision Not to Review an Initial Determination Finding
Respondent Xfire, Inc. in Default.
On June 14 , 2019, the Commission determined not to review an initial
determination granting a joint, unopposed motion to amend the amended complaint and
notice of investigation to correct a corporate entity name. See Order No. 26 (May 21 ,
2019), aff'd, Commission Decision Not to Review an Initial Determination Granting a
Joint, Unopposed Motion to Amend the Amended Complaint and Notice of Investigation.
On June 24, 2019, the private parties filed a technology stipulation. See EDIS
Doc. ID No. 679303.
On August 23 , 2019, the Commission determined not to review an initial
determinations granting joint motions for partial termination of the investigation as to
certain respondents2 based on settlement agreements. See Order Nos. 31 , 32, 33, and 34
(July 30, 2019), aff'd, Commission Determination Not to Review Initial Determinations
Granting Joint Motions for Partial Termination of the Investigation As to Certain
Respondents Based on Settlement Agreements. As a result of this notice, only five
respondents (Vapor 4 Life Holdings, Inc. ; ZLab S.A.; SS Group Holdings; Shenzhen
Yibo Technology Co., Ltd. ; and Eonsmoke, LLC) remained active in this investigation.
On September 4, 2019, the Commission determined to review in part an initial
determination granting in part complainant' s motion for summary determination of
2 J Well France S.A.S.; MMS/ECVD LLC; ECVD/MMS Wholesale LLC; Myle Vape,
Inc. ; ALD Group Limited; and Shenzhen Joecig Technology Co., Ltd.
5

PUBLIC VERSION
importation, infringement, and domestic industry. See Order No. 35 (Aug. 5, 2019), ajf'd
in part, Commission Determination to Review in Part an Initial Determination Granting
in Part Complainant's Motion for Summary Determination of Importation, Infringement,
and Domestic Industry. The Commission Notice stated, "The Commission has
determined to remand to the ALJ for clarification regarding the analysis of infringement
and the statement regarding mootness." Commission Notice at 1.3
On September 5, 2019, the Commission determined not to review an initial
determination partially terminating the investigation based on the withdrawal of certain
patent ciaims. See Order No. 36 (Aug. 8, 2019), ajf'd, Commission Decision Not to
Review an Initial Determination Partially Terminating the Investigation Based on the
Withdrawal of Certain Patent Claims. The following asserted patents and claims were
terminated:
• 	U.S. Patent No. 10,070,669: claims 4, 5, 7, 8, 10 , 12, 16, 17, 20 and 21;
• 	U.S. Patent No. 10,045,568: claims 1-3, 5-9, 18 and 19;
• 	U.S. Patent No. 10,058,130: claims 5, 6, 8-10, 16, 19, 21 and 27;
• 	U.S. Patent No. 10,104,915: claims: 2-4, 9, 11, 12, 18-20, 22, 23 and 27; and
• 	U.S. Patent No. 10,076,139: all asserted claims.
Accordingly, the following claims remain at issue in this investigation:
• 	U.S. Patent No. 10,070,669: claims 1, 2 and 13;
• 	U.S. Patent No. 10,045,568: claims 12, 17 and 20;
• 	U.S. Patent No. 10,058,130: claims 1, 2 and 4; and
• 	U.S. Patent No. 10,104,915: claims 1, 6 and 21.
3 On October 10, 2019, in response to the notice and concurrently issued Commission
order, the administrative law judge issued a "Remand of Order No. 35 (ID) Clarification
and Statement." See EDIS Doc. ID No. 690976.
6

PUBLIC VERSION
A prehearing conference was held on August 6, 2019, with the evidentiary
hearing in this investigation commencing immediately thereafter. Complainant Juul, five
remaining respondents Vapor 4 Life Holdings, Inc.; ZLab S.A.; SS Group Holdings;
Shenzhen Yibo Technology Co., Ltd.; and Eonsmoke, LLC, and the Staff participated in
the hearing. The hearing concluded on August 7, 2019. See Order No. 6 (Feb. 21, 2019);
P.H. Tr. 1-70; Tr. 1-619. The parties were requested to file post-hearing briefs not to
exceed 220 pages in length, and to file reply briefs not to exceed 80 pages in length. P.H.
Tr.10-11.
On August 23, 2019, the parties filed a joint outline of the issues to be decided in
the Final Initial Determination. See Parties' Joint Outline of the Issues to Be Decided
("Joint Outline") (EDIS Doc. ID No. 686159). On September 3, 2019, the parties filed a
joint outline of the reply briefs. See Parties' Joint Outline of Reply Briefs ("Joint Reply
Outline") (EDIS Doc. ID No. 687043).
On October 17, 2019, the administrative law judge held a telephone conference
with the parties concerning anticipated settlements with respect to respondents Vapor 4
Life Holdings, Inc.; ZLab S.A.; SS Group Holdings; and Shenzhen Yibo Technology Co.,
Ltd. The undersigned also received letters about changes concerning which respondents
may or may not settle with the complainant. Under these circumstances, on November 8,
2019, the administrative law judge filed an order extending the target date by one month.
See Order No. 3 7. Accordingly, the initial determination on alleged violation of section
337 will be due on December 13, 2019, and the target date for completion of this
investigation will be April 13, 2020, which is 16 months after institution of the
investigation.
7

PUBLIC VERSION
On October 23 , 2019, the parties filed a joint outline of the issues to be decided in
the Final Initial Determination as to respondent Eonsmoke. See Joint Outline of Issues to
Be Decided As to Eonsmoke Only ("Joint Outline - Eonsmoke") (EDIS Doc. ID No.
692144). On October 23 , 2019, the parties filed a joint outline of the reply briefs. See
Parties' Joint Outline of Reply Briefs As to Respondent Eonsmoke Only ("Joint Reply
Outline - Eonsmoke") (EDIS Doc. ID No. 692141). In its initial posthearing brief,
Eonsmoke briefed only the level of ordinary skill in the art and validity issues (but not
including secondary considerations). See Joint Outline - Eonsmoke; Ground Rule 11 ;
P.H. Tr. 11 ("The main briefs are to cover all issues.").
Three months after the evidentiary hearing, complainant and respondents Vapor 4
Life Holdings, Inc.; ZLab S.A .; SS Group Holdings; and Shenzhen Yibo Technology Co.,
Ltd. filed joint motions to terminate the investigation based on settlement agreements.
On November 19, 2019, the administrative law judge issued an initial determination
granting an amended joint motion to terminate the investigation as to respondent Vapor 4
Life Holdings, Inc. based on a settlement agreement. See Order No. 38. On November
19 , 2019, the administrative law judge issued an initial determination granting a joint
motion to terminate the investigation as to respondents ZLab S.A. ; SS Group Holdings;
and Shenzhen Yibo Technology Co., Ltd. based on a settlement agreement. See Order
No. 39. As a result, only respondent Eonsmoke, LLC ("Eonsmoke") remains in this
investigation.
B. 	The Parties
The complainant is Juul Labs, Inc. ("JLI") of San Francisco, California. JLI is a
privately-held corporation organized and existing under the laws of the State of
8

PUBLIC VERSION
Delaware. See Compl. Br. at 6; Complaint, , 19. JLI was founded in 2007 under the
name Ploom, Inc ("Ploom"). Ploom changed its name to Pax Labs, Inc. ("Pax") in 2015.
See id. 	On June 30, 2018, the Pax division developing electronic nicotine delivery
system ("ENDS") products was renamed to Juul Labs, Inc., and its other divisions were
spun off but reacquired the corporate name Pax Labs, Inc. See id.; Technology
Stipulation at 1. Before the reorganization, Pax developed the product that is now known
as the JUUL system- 	the domestic industry product in this investigation. See Compl. Br .
at 7. Pax and JUUL Labs, Inc. became separate companies in 2017. See id.
As noted above, there were initially 21 named respondents in this investigation.
See 83 Fed. Reg. 64156 (Dec. 13 , 2018). The investigation was terminated with respect
to 20 respondents. Only respondent Eonsmoke remains in this investigation.
Eonsmoke is based in Clifton, New Jersey, and is an importer, distributor, and
seller of ENDS devices and pods, including the Eonsmoke devices and pods
manufactured by Ziip Lab Co., Limited ("Ziip" ). The accused products for Eonsmoke
include the Eonsmoke device, the Eonsmoke v2.0 device, Eonsmoke (Eon) pod, and the
4Xpod.
The Office of Unfair Import Investigations also remains a party to this
investigation.
C. 	The Accused Products
The accused products with respect to Eonsmoke include the Eonsmoke device, the
Eonsmoke v2.0 device, Eonsmoke (Eon) pod, and the 4X pod (individually and
collectively, "Eonsmoke accused products"). See Compl. Br. at 10 (citing CX-0958C
(Eonsmoke Invoices 13); CX-0858 (Eonsmoke's Supp. Responses to JLI's RF As)).
9

PUBLIC VERSION
D. 	Asserted Patents and Technological Background
United States Patent No. 10 ,070,669 ("the ' 669 patent"), entitled "Cartridge for
use with a vaporizer device," issued on September 11 , 2018. JX-0003 (' 669 Patent). The
' 669 patent issued from Application No. 15/820,370, filed on November 21 , 2017. Id.
The ' 669 patent application is a continuation of, and claims priority to, Application No.
15/257,748 filed on September 6, 2016. The ' 669 patent relates to "apparatuses,
including systems and devices, for vaporizing material to form an inhalable aerosol.
Specifically, these apparatuses may include vaporizers, cartridge for use with a vaporizer
device, and vaporizers with cartridges.'' JX-0003 , 2:31-36. The ' 669 patent has a total of
21 claims.
United States Patent No. 10 ,045,568 ("the '568 patent"), entitled "Vaporization
device systems and methods," issued on August 14 , 2018. JX-0001 (' 568 Patent). The
' 568 patent issued from Application No. 15/832,749, filed on December 5, 2017. Id.
. The ' 568 patent application is a continuation of, and claims priority to, Application No.
15/379,898, filed on December 15 , 2016, which is a continuation-in-part of other patent
applications; The ' 568 patent relates to "apparatuses, including systems and devices, for
vaporizing material to form an inhalable aerosol. Specifically, these apparatuses may
include vaporizers." JX-0001 , 1:64-67. The ' 568 patent has a total of 20 claims.
United States Patent No. 10 ,058,130 ("the ' 130 patent"), entitled "Cartridge for
use with a vaporizer device," issued on August 28, 2018. JX-0002 (' 130 Patent). The
'130 patent issued from Application No. 15/813,089, filed on November 14, 2017. Id.
The ' 130 patent application is a continuation of, and claims priority to, Application No.
15/257,748 filed on September 6, 2016, which is a continuation-in-part of other patent
10

PUBLIC VERSION
applications. The ' 130 patent relates to "apparatuses, including systems and devices, for
vaporizing material to form an inhalable aerosol. Specifically, these apparatuses may
include vaporizers, cartridge for use with a vaporizer device, and vaporizers with
cartridges." JX -0002, 2:32-36. The ' 130 patent has a total of27 claims.
United States Patent No . 10,104,915 ("the ' 915 patent"), entitled "Securely
attaching cartridges for vaporizer devices," issued on October 23, 2018. JX-0004 ('915
Patent). The ' 915 patent issued from Application No. 15/815,666, filed on November 16,
2017. Id. The ' 915 patent application is a continuation of, and claims priority to,
Application No. 15/430,357, filed on February 10, 2017, which is a continuation-in-part
of other patent applications. The ' 915 patent also claims priority to Provisional
Application No. 62/294,281, filed on February 11 , 2016. The ' 915 patent relates to
"apparatuses, including systems and devices, for vaporizing material to form an inhalable
aerosol. Specifically, these apparatuses may include vaporizers." JX-0004, 2:64-67. The
' 915 patent has a total of 32 claims.
According to JLI, ENDS products based on liquid nicotine solutions (also called
e-liquid), vaporize a liquid solution containing nicotine and permit the user to inhale that
solution as an aerosol. E-liquid based ENDS are also sometimes called e-cigarettes. See
CX-0016C (Alarcon WS) Q/A 31. An e-liquid based ENDS product typically includes a
storage compartment that holds the liquid nicotine solution, a heating element that
vaporizes the liquid to generate an aerosol, and a battery and circuitry to power and
operate the heating element. See id. ; CX-0015C (Collins WS) Q/A 38. The user can
inhale an aerosolized nicotine solution generated by the heating element. See CX-0016C
(Alarcon WS) Q/A 32.
11

PUBLIC VERSION
JL I' s JUUL system is an ENDS product that includes a device and a cartridge.
See CX-0016C (Alarcon WS) at Q/A 33. The device is sometimes called a vaporizer,
battery, or , generally, a device. The device contains a battery and circuitry. See id The
cartridge is sometimes called a pod. The cartridge of the accused products and JLI' s
JUUL system is now called a cartomizer, meaning the atomizer, which is responsible for
generating the aerosol, is built into the cartridge. See id
The JUUL device is configured to be used with a JUULpod. See CX-0016C
(Alarcon WS) at Q/A 35. Likewise, a JUULpod is configured to be used with a JUUL
device. To use the cartridge-based ENDS system of the JUUL system, a user first inserts
a cartridge into the receptacle of a compatible device. See CX-0016C (Alarcon WS) Q/A
36. When inserted, the cartridge' s electrical contacts will engage the device's electrical
contacts, completing an electrical circuit between the heating element and the battery.
See id Once the product is activated by the user, either with a button or by inhaling on
the mouthpiece, the device sends electrical power through the electrical contacts to the
heating element. See id The heating element generates heat that causes the liquid to
vaporize. The vapor immediately disperses in air, forming an aerosol. Airflow carries
the generated aerosol from the heating element to the user' s mouth. See id The
mouthpiece encloses and conceals a portion of a storage compartment. See CX-0015C
(Collins WS) Q/A 39.
When a user inhales through the mouthpiece, electrical power is provided by the
battery to a resistive heating element through the flat, folded over contact tabs. See CX-
0015C (Collins WS) Q/A 40. The resistive heating element converts the electrical power
to heat, which in turn heats the vaporizable liquid within the adjacent wick, generating
12

PUBLIC VERSION
aerosol. As liquid is vaporized by the resistive heating element, more liquid is drawn
towards the heater by capillary action within the wick, allowing the generation of more
aerosol. See id.
II. Jurisdiction and Importation
On August 5, 2019, the administrative law judge issued an initial determination
granting complainant' s motion for summary determination with respect to importation.
See Order No. 35 (Aug. 5, 2019) at 4-5, aff'd in part , Commission Determination to
Review in Part an Initial Determination Granting in Part Complainant' s Motion for
Summary Determination of Importation, Infringement, and Domestic Industry (Sept. 4,
2019) (Commission determining not to review importation). Thus, the Commission has
in rem jurisdiction over the accused products. See e.g., Sealed Air Corp. v. United States
Int '/ Trade Comm 'n, 645 F.2d 976, 985-86 (C.C.P.A. 1981).
As indicated in the Commission' s notice of investigation, discussed above, this
investigation ·involves the importation of products alleged to infringe United States
patents in a manner that violates section 337 of the Tariff Act, as amended. No party has
contested the Commission' s jurisdiction over the subject matter of this investigation. It is
found that the Commission has subject matter jurisdiction over this investigation.
No party has contested the Commission' s personal jurisdiction over it. In
particular, Eonsmoke has been given notice of this investigation at least through service
of the complaint and notice of investigation, and has participated in this investigation on
the merits. It is therefore found that the Commission has personal jurisdiction over all
parties.
13

PUBLIC VERSION
III. 	General Principles of Applicable Law
A. 	Claim Construction
Claim construction begins with the plain language of the claim. 4 Claims should
be given their ordinary and customary meaning as understood by a person of ordinary
skill in the art, viewing the claim terms in the context of the entire patent. 5 Phillips v.
AWHCorp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005), cert. denied, 546 U.S. 1170 ·
(2006).
In some instances, claim terms do not have particular meaning in a field of art,
and claim construction involves little more than the application of the widely accepted
meaning of commonly understood words. Phillips, 415 F.3d at 1314. "In such
circumstances, general purpose dictionaries may be helpful." Id.
In many cases, claim terms have a specialized meaning, and it is necessary to
determine what a person of skill in the art would have understood the disputed claim
language to mean. "Because the meaning of a claim term as understood by persons of
skill in the art is often not immediately apparent, and because patentees frequently use
terms idiosyncratically, the court looks to 'those sources available to the public that show
4 Only those claim terms that are in controversy need to be construed, and only to the
extent necessary to resolve the controversy. Vanderlande Indus. Nederland BV v. Int'!
Trade Comm., 366 F.3d 1311, 1323 (Fed. Cir. 2004); Vivid Tech. , Inc. v. American Sci. &
Eng 'g, Inc., 200 F.3d 795,803 (Fed. Cir. 1999).
5 Factors that may be considered when determining the level of ordinary skill in the art
include: "(1) the educational level of the inventor; (2) type of problems encountered in
the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are
made; (5) sophistication of the technology; and (6) educational level of active workers in
the field." Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 693,696 (Fed. Cir.
1983), cert. denied, 464 U.S. 1043 (1984).
14

PUBLIC VERSION
what a person of skill in the art would have understood disputed claim language to
mean. "' Phillips, 415 F.3d at 1314 (quoting Innov a/Pu~e Water, Inc. v. Safari Water
Filtration Sys ., Inc., 381 F.3d 1111 , 1116 (Fed. Cir. 2004)). The public sources identified
in Phillips include "the words of the claims themselves, the remainder of the
specification, the prosecution history, and extrinsic evidence concerning relevant
scientific principles, the meaning of technical terms, and the state of the art." Id. (quoting
Innova, 381 F.3d at 1116).
In cases in which the meaning of a claim term is uncertain, the specification
usually is the best guide to the meaning of the term. Phillips, 415 F.3d at 1315. As a
general rule, the particular examples or embodiments discussed in the specification are
not to be read into the claims as limitations. Markman v. Westview Instruments, Inc., 52
F.3d 967, 979 (Fed: Cir. 1995) (en bane), aff'd, 517 U.S. 370 (1996). The specification
is, however, always highly relevant to the claim construction analysis, and is usually
dispositive. Phillips, 415 F .3d at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc. , 90
F.3d 1576, 1582 (Fed. Cir. 1996)). Moreover, " [t]he construction that stays true to the
claim language and most naturally aligns with the patent' s description of the invention
will be, in the end, the correct construction." Id. at 1316.
Claims are not necessarily, and are not usually, limited in scope to the preferred
embodiment. RF Delaware, Inc. v. Pa cific Keystone Techs ., Inc., 326 F.3d 1255, 1263
(Fed. Cir. 2003); Decisioning.com, Inc. v. Federated Dep 't Stores, Inc., 527 F.3d 1300,
1314 (Fed. Cir. 2008) (" [The] description of a preferred embodiment, in the absence of a
clear intention to limit claim scope, is an insufficient basis on which to narrow the
claims." ). Nevertheless, claim constructions that exclude the preferred embodiment are
15

PUBLIC VERSION
"rarely, if ever, correct and require highly persuasive evidentiary support." Vitronics, 90
F.3d at 1583. Such a conclusion can be mandated in rare instances by clear intrinsic
evidence, such as unambiguous claim language or a clear disclaimer by the patentees
during patent prosecution. Elekta Instrument S.A. v. 0. UR . Sci. Int '/, Inc., 214 F.3d
1302, 1308 (Fed. Cir. 2000); Rheox, Inc. v. Entact, Inc. , 276 F.3d 1319 (Fed. Cir. 2002).
If the intrinsic evidence does not establish the meaning of a claim, then extrinsic
evidence may be considered. Extrinsic evidence consists of all evidence external to the
patent and the prosecution history, and includes inventor testimony, expert testimony, and
learned treatises. Phillips, 415 F .3d at 1317. Inventor testimony can be useful to shed
light on the relevant art. In evaluating expert testimony, a court should discount any
expert testimony that is clearly at odds with the claim construction mandated by the
claims themselves, the written description, and the prosecution history, in other words,
with the written record of the patent. Id. at 1318. Extrinsic evidence may be considered
if a court deems it helpful in determining the true meaning of language used in the patent
claims. Id.
B. Infringement
Under 35 U.S.C. §271(a), direct infringement consists of making, using, offering
to sell, or selling a patented invention without consent of the patent owner. The
complainant in a section 337 investigation bears the burden of proving infringement of
the asserted patent claims by a "preponderance of the evidence." Certain Flooring
Products, Inv. No. 337-TA-443, Comm' n Notice of Final Determination ofNo Violation
of Section 337, 2002 WL 448690, at *59, (Mar. 22, 2002); Enercon GmbHv . Int '/ Trade
Comm 'n, 151 F.3d 1376 (Fed. Cir. 1998).
16

PUBLIC VERSION
Literal infringement of a claim occurs when every limitation recited in the claim
appears in the accused device, i.e. , when the properly construed claim reads on the
accused device exactly.6 Amhil Enter s. , Ltd. v. Wawa, Inc., 81 F.3d 1554, 1562 (Fed. Cir.
1996); Southwall Te c h. v. Cardinal JG Co., 54 F.3d 1570, 1575 (Fed Cir. 1995).
If the accused product does not literally infringe the patent claim, infringement
might be found under the doctrine of equivalents. "Under this doctrine, a product or
process that does not literally infringe upon the express terms of a patent claim may
nonetheless be found to infringe if there is ' equivalence' between the elements of the
accused product or process and the claimed elements of the patented invention." Warner-
Jenkinson Co ., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 21 (1997) (citing Graver
Tank & Mfg. Co. v. Linde A ir Products Co., 339 U.S. 605, 609 (1950)). "The
determination of equivalence should be applied as an objective inquiry on an
element-by-element basis."7 Id. at 40.
"An element in the accused product is equivalent to a claim limitation if the
differences between the two are insubstantial. The analysis focuses on whether the
element in the accused device 'performs substantially the same function in substantially
the same way to obtain the same result' as the claim limitation." AquaTex Indus. v.
6 Each patent claim element or limitation is considered material and essential. London v.
Carson Pirie Scott & Co., 946 F.2d 1534, 1538 (Fed Cir. 1991). If an accused device
lacks a limitation of an independent claim, the device cannot infringe a dependent claim.
See Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1552 n.9 (Fed. Cir. 1989).
7 "Infringement, whether literal or under the doctrine of equivalents, is a question of
fact." A bsolute Software, Inc. v. Stealth Signal, Inc., 659 F.3d 1121, 1130 (Fed. Cir.
2011).
17

PUBLIC VERSION
Techniche Solutions, 419 F.3d 1374, 1382 (Fed. Cir. 2005) (quoting Graver Tank, 339
U.S. at 608); accord Absolute Software, 659 F.3d at 1139-40. 8
Prosecution hi~tory estoppel can prevent a patentee from relying on the doctrine
of equivalents when the patentee relinquished subject matter during the prosecution of the
patent, either by amendment or argument. AquaTex, 419 F.3d at 1382. In particular,
"[t]he doctrine of prosecution history estoppel limits the doctrine of equivalents when an
applicant makes a narrowing amendment for purposes of patentability, or clearly and
unmistakably surrenders subject matter by arguments made to an examiner." Id .
(quoting Salazar v. Procter & Gamble Co., 414 F.3d 1342, 1344 (Fed. Cir. 2005)).
Section 271(b) of the Patent Act governs induced infringement, "Whoever
actively induces infringement of a patent shall be liable as an infringer." 35 U.S.C. §
271(b). In contrast to direct infringement, liability for inducing infringement attaches
only if the defendant knew of the patent and that ''the induced acts constitute patent
infringement." See Cammi/ USA , LLC v. Cisco Sys ., Inc. , 135 S.Ct. 1920, 1926 (2015)
("Cammi/ USA " ).
Section 271 (c) of the Patent Act deals with contributory infringement:
"Whoever offers to sell or sells within the United States or imports into
the United States a component of a patented machine, manufacture,
combination or composition, or a material or apparatus for use in
practicing a patented process, constituting a material part of the invention,
knowing the same to be especially made or especially adapted for use in
8 "The known interchangeability of substitutes for an element of a patent is one of the
express objective factors noted by Graver Tank as bearing upon whether the accused
device is substantially the same as the patented invention. Independent experimentation
by the alleged infringer would not always reflect upon the objective question whether a
person skilled in the art would have known of the interchangeability between two
elements, but in many cases it would likely be probative of such knowledge."
Warner-Jenkinson , 520 U.S. at 36.
18

PUBLIC VERSION
an infringement of such patent, and not a staple article or commodity of
commerce suitable for substantial noninfringing use, shall be liable as a
contributory infringer."
35 U.S.C. § 271(c). Like induced infringement, contributory infringement requires
knowledge of the patent in suit and knowledge of patent infringement. Commit USA , 135
S.Ct. at 1926.
Section 271(c) "covers both contributory infringement of system claims and
method claims."9 Arris Group v. British Telecomm. PLC , 639 F.3d 1368, 1376 (Fed. Cir.
2011) (footnotes omitted). To hold a component supplier liable for contributory
infringement, a patent holder must show, inter alia, that (a) the supplier' s product was
used to commit acts of direct infringement; (b) the product's use constituted a material
part of the invention; (c) the supplier knew its product was especially made or especially
adapted for use in an infringement" of the patent; and (d) the product is not a staple
article or commodity of commerce suitable for substantial noninfringing use. Id.
C. Validity
One cannot be held liable for practicing an invalid patent claim. See Commil
USA , 135 S.Ct. at 1929; Pandrol USA, LP v. AirBoss Railway Prods., Inc., 320 F.3d
1354, 1365 (Fed. Cir. 2003). Nevertheless, each claim of a patent is presumed to be
valid, even if it depends from a claim found to be invalid. 35 U.S.C. § 282; DMI Inc. v.
Deere & Co. , 802 F.2d 421 (Fed. Cir. 1986).
9 "Claims which recite a ' system ,' 'apparatus ,' ' combination ,' or the like are all
analytically similar in the sense that their claim limitations include elements rather than
method steps. All such claims can be contributorily infringed by a component supplier."
Arris, 639 F.3d at 1376 n.8.
19

PUBLIC VERSION
A respondent that has raised patent invalidity as an affirmative ddense must
overcome the presumption by "clear and convincing" evidence of invalidity. Checkpoint
Systems, Inc. v. United States Int '/ Trade Comm 'n, 54 F.3d 756, 761 (Fed. Cir. 1995).
1. 	Anticipation
Anticipation under 35 U.S.C. § 102 is a question of fact. z4 Techs ., Inc. v.
Microsoft Corp. , 507 F.3d 1340, 1347 (Fed. Cir. 2007). Section 102 provides that,
depending on the circumstances, a claimed invention may be anticipated by variety of
prior art, including publications, earlier-sold products, and patents. See 35 U.S.C. § 102
(e .g., section 102(b) provides that one is not entitled to a patent if the claimed invention
"was patented or described in a printed publication in this or a foreign country or in
public use or on sale in this country, more than one year prior to the date of the
application for patent in the United States").
The general law of anticipation may be summarized, as follows:
A reference is anticipatory under § 102(b) when it satisfies
particular requirements. First, the reference must disclose each
and every element of the claimed invention, whether it does so
explicitly or inherently. Eli Lilly & Co . v. Zenith Goldline
Pharm s., Inc., 471 F.3d 1369, 1375 (Fed.Cir.2006). While those
elements must be "arranged or combined in the same way as in the
claim," Net Money/N, Inc. v. VeriSign, Inc. , 545 F.3d 1359, 1370
(Fed.Cir.2008), the reference need not satisfy an ipsissimis verbis
test, In re Bond, 910 F.2d 831, 832-33 (Fed.Cir.1990). Second, the
reference must "enable one of ordinary skill in the art to make the
invention without undue experimentation." lmpax Labs ., Inc. v.
Aventis Pharms. Inc., 545 F.3d 1312, 1314 (Fed.Cir.2008); see In
re LeGrice, 49 C.C.P.A. 1124, 301 F.2d 929, 940-44 (1962). As
long as the reference discloses all of the claim limitations and
enables the "subject matter that falls within the scope of the claims
at issue," the reference anticipates -- no "actual creation or
reduction to practice" is required. Schering Corp. v. Geneva
Pharms. , Inc. , 339 F.3d 1373, 1380-81 (Fed.Cir.2003); see In re
Donohue, 766 F .2d 531 , 533 (Fed.Cir.1985). This is so despite the
20

PUBLIC VERSION
fact that the description provided in the anticipating reference
might not otherwise entitle its author to a patent. See Vas-Cath
In c. v. Mahurkar, 935 F.2d 1555, 1562 (Fed.Cir.1991) (discussing
the "distinction between a written description adequate to support a
claim under§ 112 and a written description sufficient to anticipate
its subject matter under § 102(b)").
In re Gleave, 560 F.3d 1331 , 1334 (Fed. Cir. 2009).
2. 	Obviousness
Under section 103 of the Patent Act, a patent claim is invalid " if the differences
between the subject matter sought to be patented and the prior art are such that the subject
matter as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains." 10 35 U.S.C.
§ 103. While the ultimate determination of whether an invention would have been
obvious is a legal conclusion, it is based on "underlying factual inquiries including: (1)
the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the
differences between the claimed invention and the prior art; and (4) objective evidence of
nonobviousness." 	Eli Lilly and Co. v. Teva Pharmaceuticals USA , Inc. , 619 F.3d 1329
(Fed. Cir. 2010).
The objective evidence, also known as "secondary considerations," includes
commercial success, long felt need, and failure of others. Graham v. John Deere Co.,
383 U.S. 1, 13-17 (1966); Dystar Te xtilfarben GmbH v. CH Patrick Co. , 464 F.3d 1356,
1361 (Fed. Cir. 2006). "[E]vidence arising out of the so-called ' secondary
considerations' must always when present be considered en route to a determination of
10 The standard for determining whether a patent or publication is prior art under section
103 is the same as under 35 U.S.C. § 102, which is a legal question. Panduit Corp. v.
Dennison Mfg. Co., 810 F.2d 1561 , 1568 (Fed. Cir. 1987).
21

PUBLIC VERSION
obviousness." Stratoflex, In c. v. Aeroquip Corp. , 713 F.2d 1530, 1538 (Fed. Cir. 1983).
Secondary considerations, such as commercial success, will not always dislodge a
determination of obviousness based on analysis of the prior art. See KSR Int'/ Co. v.
Teleflex Inc., 550 U.S. 398, 426 (2007) (commercial success did not alter conclusion of
obviousness).
"One of the ways in which a patent' s subject matter can be proved obvious is by
noting that there existed at the time of invention a known problem for which there was an
obvious solution encompassed by the patent' s claims." KSR, 550 U.S. at 419-20. "[A]ny
need or problem known in the field of endeavor at the time of invention and addressed by
the patent can provide a reason for combining the elements in the manner claimed." Id.
Specific teachings, suggestions, or motivations to combine prior art may provide
helpful insights into the state of the art at the time of the alleged invention. Id . at 420.
Nevertheless, "an obviousness analysis cannot be confined by a formalistic conception of
the words teaching, suggestion, and motivation, or by overemphasis on the importance of
published articles and the explicit content of issued patents. The diversity of inventive
pursuits and of modem technology counsels against limiting the analysis in this way." Id .
"Under the correct analysis, any need or problem known in the field of endeavor at the
time of invention and addressed by the patent can provide a reason for combining the
elements in the manner claimed." Id. A "person of ordinary skill is also a person of
ordinary creativity." Id. at 421.
Nevertheless, "the burden falls on the patent challenger to show by clear and
convincing evidence that a person of ordinary skill in the art would have had reason to
attempt to make the composition or device, or carry out the claimed process, and would
22

PUBLIC VERSION
have had a reasonable expectation of success in doing so." PharmaStem Therapeutics,
Inc. v. Vi aCel/, Inc., 491 F.3d 1342, 1360 (Fed. Cir. 2007); see KSR, 550 U.S. at 416 (a
combination of elements must do more than yield a predictable result; combining
elements that work together in an unexpected and fruitful manner would not have been
obvious). 11
D. 	Domestic Industry
A violation of section 337(a)(l)(B), (C), (D), or (E) can be found "only if an
industry in the United States, with respect to the articles protected by the patent,
copyright, trademark, mask work, or design concerned, exists or is in the process of being
established." 19 U.S.C. § 1337(a)(2). Section 337(a) further provides:
(3) For purposes of paragraph (2), an industry in the United States
shall be considered to exist if there is in the United States, with
respect to the articles protected by the patent, copyright, trademark,
mask work, or design concemed-
(A) significant investment in plant and equipment;
(B) significant employment of labor or capital; or
(C) substantial investment in its exploitation, including
engineering, research and development, or licensing.
19 U.S.C. § 1337(a)(3).
These statutory requirements consist of an economic prong (which requires
certain activities)12 and a technical prong (which requires that these activities relate to the
11 Further, "when the prior art teaches away from combining certain known elements,
discovery of a successful means of combining them is more likely to be nonobvious."
KSR, 550 U.S. at 416 (citing United States v. Adams, 383 U. S. 39, 52 (1966)).
12 The Commission practice is usually to assess the facts relating to the economic prong
at the time that the complaint was filed. See Certain Coaxial Cable Connectors and
Components Thereof and Products Containing Same, Inv. No. 337-TA-560, Comm'n Op.
23

PUBLIC VERSION
intellectual property being protected). Certain Stringed Musical Instruments and
Components Thereof, Inv. No. 337-TA-586, Comm'n Op. at 13 (May 16, 2008)
("Stringed Musical Instruments"). The burden is on the complainant to show by a
preponderance of the evidence that the domestic industry requirement is satisfied.
Certain Multimedia Display and Navigation Devices and Systems, Components Thereof
and Products Containing Same, Inv. No. 337-TA-694, Comm'n Op. at 5 (July 22, 2011)
("Navigation Devices").
With respect to the economic prong, and whether or not section 337(a)(3)(A) or
(B) is satisfied, the Commission has held that ''whether a complainant has established that
its investment and/or employment activities are significant with respect to the articles
protected by the intellectual property right concerned is not evaluated according to any
rigid mathematical formula." Certain Printing and Imaging Devices and Components
Thereof, Inv. No. 337-TA-690, Comm'n Op. at 27 (Feb. 17, 2011) ("Printing and
Imaging Devices") (citing Certain Male Prophylactic Devices, Inv. No. 337 TA-546,
Comm'n Op. at 39 (Aug. 1, 2007)). Rather, the Commission examines "the facts in each
investigation, the article of commerce, and the realities of the marketplace." Id. 	"The
determination takes into account the nature of the investment and/or employment
at 39 n.17 (Apr. 14, 2010) ("We note that only activities that occurred before the filing of
a complaint with the Commission are relevant to whether a domestic industry exists or is
in the process of being established under sections 337(a)(2)-(3).") (citing Bally/Midway
Mfg. Co. v. US. Int'/ Trade Comm 'n, 714 F.2d 1117, 1121 (Fed. Cir. 1983)). In some
cases, however, the Commission will consider later developments in the alleged industry,
such as "when a significant and unusual development occurred after the complaint has
been filed." See Certain Video Game Systems and Controllers, Inv. No. 337-TA-743,
Comm'n Op., at 5-6 (Jan. 20, 2012) ("[I]n appropriate situations based on the specific
facts and circumstances of an investigation, the Commission may consider activities and
investments beyond the filing of the complaint.").
24

PUBLIC VERSION
activities, 'the industry in question, and the complainant' s relative size. " ' Id (citing
Stringed Musical Instruments at 26).
The Commission has rejected a finding of quantitative significance based solely
on the absolute value of the domestic industry investments devoid of any context. A
contextual analysis is required. The analysis may include a discussion of the value of
domestic investments in the context of the relevant marketplace, such as by comparing a
complainant's domestic expenditures to its foreign expenditures or considering the value
added to the product from a complainant' s activities in the United States. See Certain
Carburetors and Products Containing Such Carburetors, Inv. No. 337-TA-1123,
Comm'n Op. at 18 (Oct. 28, 2019).
With respect to section 337(a)(3)(C), whether an investment in domestic industry
is "substantial" is a fact-dependent inquiry for which the complainant bears the burden of
proof. Stringed Musical Instruments at 14. There is no minimum monetary expenditure
that a complainant must demonstrate to qualify as a domestic industry under the
"substantial investment" requirement of this section. Id at 25 . There is no need to define
or quantify an industry in absolute mathematical terms. Id at 26. Rather, "the
requirement for showing the existence of a domestic industry will depend on the industry
in question, and the complainant' s relative size." Id at 25-26.
IV. U.S. Patent No. 10,070,669
United States Patent No. 10 ,070,669 ("the ' 669 patent"), entitled "Cartridge for
use with a vaporizer device," issued on September 11 , 2018. JX-0003 (' 669 Patent). The
' 669 patent issued from Application No. 15/820,370, filed on November 21 , 2017. Id
25

PUBLIC VERSION
The ' 669 patent application is a continuation of, and claims priority to, Application No.
15/257,748 filed on September 6, 2016. The ' 669 patent relates to "apparatuses,
including systems and devices, for vaporizing material to form an inhalable aerosol.
Specifically, these apparatuses may include vaporizers, cartridge for use with a vaporizer
device, and vaporizers with cartridges." JX-0003 , 2:31-36. The '669 patent has a total of
21 claims.
Complainant asserts claims 1, 2 and 13 of the ' 669 patent. See Compl. Br. at 14.
As discussed below, the evidence shows that (1) the asserted claims are infringed by the
accused products; (2) complainant has satisfied the technical prong of the domestic
industry requirement; and (3) the asserted claims are not invalid.
Asserted claims 1, 2 and 13 are recited below:
1. A cartridge for generating an aerosol, the cartridge comprising:
[a] a body including a storage compartment configured to hold
a vaporizable material, the body having a first end and a second
end opposite the first end, the body comprising a surface
between the first end and the second end;
[b] a heating element configured to generate the aerosol, the
generating of the aerosol comprising heating the vaporizable
material; and
[c] a mouthpiece secured over the first end, the mouthpiece
having a notch extending away from the second end towards
the first end, the mouthpiece covering a first portion of the
surface,
[d] the mouthpiece not covering a second portion of the
surface, the second portion of the surface configured for
insertion into a cartridge receptacle of a vaporizer device,
[e] the mouthpiece not covering a third portion of the surface,
the third portion of the surface comprising an area between the
notch and the second end, the third portion of the surface being
visible when the second portion of the surface is inserted into
the cartridge receptacle.
26

PUBLIC VERSION
2. The cartridge of claim 1, wherein the mouthpiece is opaque,
wherein the surface is transparent, and wherein the vaporizable
material is visible through the surface.
12. An apparatus for generating an aerosol, the apparatus
comprising:
[a] a vaporizer device comprising a cartridge receptacle; and
[b] a cartridge comprising:
a body including a storage compartment configured to hold
a vaporizable material, the body having a first end and a
second end-opposite the first end, the body comprising a
surface between the first end and the second end;
[c] a heating element configured to generate the aerosol, the
generating of the aerosol comprising heating the
vaporizable material; and
[d] a mouthpiece secured over the first end, the mouthpiece
covering a first portion of the surface,
[e] the mouthpiece not covering a second portion of the
surface, the second portion of the surface configured for
insertion into the cartridge receptacle,
[f] the mouthpiece not covering a third portion of the
surface, the third portion of the surface being visible when
the second portion of the surface is inserted into the
cartridge receptacle.
13. The apparatus of claim 12, wherein the mouthpiece is opaque,
wherein the surface is transparent, and wherein the vaporizable
material is visible through the surface.
JX-0003 (' 669 Patent), claims 1, 2, 12 , and 13.
A. 	Claim Construction 13
13 Respondent Eonsmoke did not discuss any of the disputed claim terms on the merits in
its posthearing briefs. See Joint Outline - Eonsmoke; and Joint Reply Outline -
Eonsmoke. Indeed, Eonsmoke' s only statement concerning claim construction is the
following:
Ziip applies the agreed upon constructions for any terms that had
agreed upon constructions, as set forth in the Joint Claim Construction
Chart. Otherwise, Ziip applies the plain and ordinary meaning of the term.
27
•

PUBLIC VERSION
1. 	A Person of Ordinary Skill in the Art
Complainant argues:
A person of ordinary skill in the art ("POSA") is one who is
presumed to be aware of all pertinent art, thinks along conventional
wisdom in the art, and is a person of ordinary creativity. A POSA in the
context of the asserted patents would have had (1) a B.S. in mechanical
engineering, ~lectrical engineering, or an equivalent degree and (2) at least
one year of experience designing consumer products. CX-0015C (Collins
WS) Q/A 33; CX-0016C (Alarcon WS) Q/A 22.
Ziip' s expert, Mr. Flolid has proposed that a POSA would have at
least a bachelor's degree in mechanical engineering, electrical
engineering, or an equivalent degree. RX-0113 (Flolid WS) Q/A 19.
Alternatively, Mr. Flolid opined that a POSA could also have had at least
two years' experience designing, developing, or testing electronic
cigarettes or related electromechanical devices, such as electromechanical
devices configured to heat liquid and generate an aerosol. Id. at Q/A 20.
Mr. Flolid further opines that his definition is only "approximate" and that
a skilled artisan could have a higher level of education to make up for less
experience or a higher level of training or skill to make up for less
education. Id. at Q/A 19. Mr. Flolid's definition of a POSA is vague and
incorrect. CX-1353C (Alarcon Rebuttal WS) Q/A 41-42; CX-0015C
(Collins WS) Q/A 34. Regardless, the differences between JLI's proposed
qualifications for a POSA and those proposed by Respondents would not
change JLI's infringement or validity analysis. CX-0015C (Collins WS)
Q/A 35; CX-1353C (Alarcon Rebuttal WS) Q/A 42.
Compl. Br. at 18-19 (citations omitted).
Respondent argues:
The key decision is the definition of a POSA. Both parties agree
that a POSA would have at least a degree in mechanical or electrical
engineering or a similar degree. And both agree that this POSA would
have some design experience with products. Ziip proposes that this
experience would be at least two years with electronic cigarettes or related
electromechanical devices because this is the subject matter of the patents
at issue.
Ziip's definition is a better one:
Resp. Br. at 3-4.
28

PUBLIC VERSION
A person of ordinary skill in this art would have (1) at least a B.S.
in mechanical engineering, electrical engineering, or an equivalent
degree and/or (2) at least two years' experience designing,
developing, or testing electronic cigarettes or related
electromechanical devices, such as electromechanical devices
configured to heat liquid and generate an aerosol. This description
is approximate, and a higher level of training or skill might make
up for less education, and vice-versa.
(RX-0113.0005-6, Q/A 18-20).
Juul has proposed a far broader definition - one year designing
consumer products - because Juul wants its POSA to be as ignorant as
possible so as not to see the connections that Ziip claims are obvious. But
Juul's definition is deficient, as its expert, Mr. Ramon Alarcon, essentially
admitted when he noted that not every consumer product would be
relevant. (Hearing Tr., at 422:15-423:16).
Ziip' s definition of a POSA as having at least two years' of
experience with devices like an electronic cigarette makes more sense as
this is the type of person would look to the prior art to find solutions to the
known problems. And, as the United States Supreme Court has held, it is
the solving of known problems that is a key determinant of obviousness.
Resp. Br. at 2-3.
The Staff argues:
JLI contends that for all asserted patents, a person of ordinary skill
in the art would have had (1) a B.S. in mechanical engineering, electrical
engineering, or an equivalent degree and (2) at least one year of
experience designing consumer products." CPreHBr. at 15. Ziip,
Eonsmoke and V4L did not present a contention in their respective pre-
hearing briefs regarding the level of ordinary skill in the art for any of the
asserted patents. Therefore, they waived any such contentions. See
Ground Rule ic . Nonetheless, Ziip and Eonsmoke' s expert, Mr . Flolid,
testified that he agreed with Ziip' s apparent contention "that a person of
ordinary skill in the art would have at least (1) a B.S. degree in mechanical
engineering, electrical engineering, or an equivalent degree and/or (2) at
least two years of experience designing, developing, or testing electronic
cigarettes or related electromechanical devices, such as electromechanical
devices configured to heat liquid and generate an aerosol. This description
is approximate, and a higher level of training or skill might make up for
less education, and vice-versa." RX-0113 at Q19.
29

PUBLIC VERSION
To the extent the ALJ does not agree that Respondents waived
their contentions as to one of ordinary skill in the art, the Staff agrees with
JLI' s contention, favoring the lesser experience requirement. The Staff,
however, is of th e view that the difference between the private parties'
proposals with respect to the level of ordinary skill does not affect the
infringement or invalidity issues in this Investigation.
Staff Br . at 19-20 (citations omitted).
As an initial matter, Eonsmoke did not discuss the level of ordinary skill in the art
for any of the asserted patents in its pre-hearing brief. Therefore, it waived any such
contention. See Ground Rule 7 .c.
In any event, JLI's proposed level of ordinary skill is more persuasive in the
context of the ' 669 patent. JLI's proposed level requires (1) a B.S. in mechanical
engineering, electrical engineering, or an equivalent degree, and (2) at least one year of
experience designing consumer products. Thus, the administrative law judge finds that a
person of ordinary skill in the art with respect to the ' 669 patent is a person who has a
B.S. in mechanical engineering, electrical engineering, or an equivalent degree, and at
least one to two years of experience designing consumer products.
2. Claim Construction
Below is a chart showing the parties' proposed claim constructions.
Claim Term Claim(s) JLl's Construction Eonsmoke's Staff's
Construction Construction
"notch" 1, 14 "a cut-out region abandoned SameasJLI
from an edge"
"portion of Plain meaning,
1, 12 which is: abandoned Same as JLI
the surface" "part of the surface"
"visible" 1, 12, 13 Plain meaning, abandoned Same as JLI
30

PUBLIC VERSION
Claim Term 	Claim(s) 	JLl's Construction Eonsmoke's 	Staff's
Construction 	Construction
which is:
"can be seen"
"heating element": "a
component that
transforms electrical
energy to heat" 	Plain meaning,
"heating 	"heating element 	which is: "a
element 	1, 12 	configured to 	component that
configured to 	generate the 	abandoned 	transforms energy
generate the 	aerosoI": "a 	to heat for
aerosol" 	component that 	generating the
transforms electrical 	aerosol" 14
energy to heat for
generating the
aerosol"
Compl. Br. at 19-22; Resps. Br. at 3-4; Staff Br. at 20-26.
Eonsmoke did not present any claim construction analyses in its pre-hearing brief,
and thus waived any such contentions. See Ground Rule 7 .c.
a. 	"notch"
The specification uses the term notch consistently to refer to "a cut-out region
from an edge." JX-0003 (' 669 Patent), 2:51-53, 3:8-15 ("a cut-out region on the distal
edge ... the cut-out region may be any appropriate shape (e.g., square, rectangular, oval,
semi-circular, or combinations thereof), and may match with another cut-out region on
the upper edge"), id. at 5:27-32 ("The window (e.g., notch) ... may be a rectangular,
14 The Staff originally proposed the same meaning as that proposed by JLI. See Joint
Claim Construction Chart. However, the Staff proposed a slight modification to its
proposed construction presented in the Joint Claim Construction Chart, shown in the
above chart.
31

PUBLIC VERSION
triangular, semi-circular, or oval cutout region"), id at 3:34-38, 4:61-65, 10 :19-23,
48:26-36, 50:46-55, 52:7-24, 52:36-65, 53:1-5, FIGS. 7A-B, 11-13, 24A-B, 27B, 28A,
30, 31A-L, 34A-L. The Staff agrees with JLI. See Staff Br. at 23.
The administrative law judge has determined that the claim term "notch" should
be construed to mean "a cut-out region from an edge."
b. 	"portion of the surface"
JLI argues and the Staff concurs that the term "portion of the surface" has a plain
and ordinary meaning, which is, "part of the surface." The specification uses the term
"portion" to refer generally to a part. JX-0003 (' 669 Patent), claim 1, FIGS. 5, 6A-B,
7A-B, 8B, 9A-9L, 11-13, 14 , 15 , 16B-C, 24A-B, 25A, 27B, 28A, 29F, 29G, 30, 31A-L,
32 , 33C, 33E, 34A-L. A person of ordinary skill in the art would understand that the
claim language describes a mouthpiece that covers part, but not necessarily all, of the
recited surface. The Staff agrees with JLI. See Staff Br. at 24.
The administrative law judge has determined that the claim term "portion of the
surface" should be given its plain and ordinary meaning, i.e. , "part of the surface."
c. 	"visible"
JLI argues and the Staff concurs that the plain and ordinary meaning of "visible"
is "can be seen." The specification uses this term consistently with its plain meaning.
See JX-0003 ('669 Patent), 2:51-52, 2:62-63 , 4:37-42, 5:4-5, 5:29-32 ("the fluid ... may
be visible; for example, the elongate fluid storage compartment may be transparent or
translucent"), id at 6:61-62, 8:19-23 (the "opaque body so that a portion of the storage
compartment and the cannula are visible through the notch"), 9:25-26, 9:35-39 (a
32

PUBLIC VERSION
"window through a side of the cartridge receptacle so that at least a portion of the ...
compartment is visible through the window"), id at 9:59-63 , 10:7-10, 19:13-16, FIGS.
7A, 7B, 9A-9L, 1115, 30, 31A-L, 33C, 34A-L. A person of ordinary skill in the art
would understand that "visible" refers the ability to see something, and would know
various ways to make something visible. The Staff agrees with JLI. See Staff Br . at 24-
25.
The administrative law judge has determined that the claim term "visible" should
be given its plain and ordinary meaning, i.e., "can be seen."
d. "heating element configured to generate the aerosol"
JLI argues that the this term has a plain and ordinary meaning, which is "a
component that transforms electrical energy to heat for generating the aerosol." A
heating element, generally, is a component that transforms electrical energy to heat. This
is consistent with the way that the specification describes the heating element in the
claimed device. JX-0003 (' 669 Patent), 1:60-61 , 19:49-56 ("[E]nergy may be derived
from a battery in electrical communication with the heating element."), id at 21 :4-13
("[t]he heating element in thermal communication with the oven may heat a vaporizable
material mass in order to create a gas phase vapor ... through conductive, convective,
and/or radiative heat transfer."), id at FIGS. 7B, 7C, 8B, 9A-9L, 10A-lOC, 17 A, 17B,
26A, 28C, 28D.
However, as argued by the Staff, the specification also discloses that instead of
electrical energy, the heating element may "alternatively [use] a chemical reaction (e.g.,
combustion or other exothermic reaction) [to] provide energy to the heating element."
33

PUBLIC VERSION
JX-0003 (' 669 Patent), 19:54-56. Thus, the specification teaches that energy need not be
limited to electrical energy.
The administrative law judge has determined that the claim term "heating element
configured to generate the aerosol" should be given its plain and ordinary meaning, i.e.,
"a component that transforms energy to heat for generating the aerosol."
B. Infringement Analysis of the '669 Patent
JLI asserts claims 1, 2, and 13 of the ' 669 patent. JLI demonstrated by a
preponderance of the evidence that Eonsmoke' s accused products infringe the asserted
claims of the ' 669 patent. See Compl. Br. at 21-30; CX-0016C (Alarcon WS) Q/A 39-
261. Indeed, Eonsmoke did not contest infringement and did not present any non-
infringement arguments in its post-hearing briefs. See Joint Outline - Eonsmoke; Joint
Reply Outline - Eonsmoke.
Nonetheless, the administrative law judge adopts JLI's infringement analysis with
respect to Eonsmoke and provides the following infringement analysis of the '669 patent.
1. Importation and Accused Products
On August 5, 2019, the administrative law judge issued an initial determination
granting complainant' s motion for summary determination with respect to importation.
See Order No. 35 (Aug. 5, 2019) at 4-5, ajf'd in part, Commission Determination to
Review in Part an Initial Determination Granting in Part Complainant' s Motion for
Summary Determination of Importation, Infringement, and Domestic Industry (Sept. 4,
2019) (Commission determining not to review importation). Thus, the Commission has
in rem jurisdiction over the accused products. See e.g. , Sealed Air Corp. v. United States
34

PUBLIC VERSION
Int '/ Trade Comm 'n, 645 F .2d 976, 985-86 (C.C.P .A. 1981 ).
Eonsmoke is based in Clifton, New Jersey, and is an importer, distributor, and
seller of ENDS devices and pods, including the Eonsmoke devices and pods
manufactured by Ziip. The accused products with respect to Eonsmoke include the
Eonsmoke device, the Eonsmoke v2.0 device, Eonsmoke (Eon) pod , and the 4X pod
(individually and collectively, "Eonsmoke accused products"). See Compl. Br . at 10
(citing CX-0958C (Eonsmoke Invoices 13); CX-0858 (Eonsmoke' s Supp. Responses to
JLI's RFAs)).
JLI provided the following table showing the Eonsmoke accused products that are
alleged to infringe the asserted patent claims:
......... ,
Accused Product 	'669 	'915 	'568 	'130
Eonsmoke Resnondent 	1, 2, 13 	1, 6, 21 	12, 17, 	1, 2, 4
Eonsmoke device 20
Eonsmoke v2 device (stipulated
representative)
Eonsmoke pods (stipulated representative)
4Xpods
Compl. Br. at 220.
Eonsmoke stipulated that the 4X pods are represented by the Eonsmoke pods,
which are manufactured by Ziip. See CX-0016C (Alarcon WS) Q/A 57-60; CX-1236C
(Representative Accused Products Stipulation). The Eonsmoke v2.0 device is
representative of the Eonsmoke device (Ziip-manufactured). See CX-0018C (Tolmach
Dep. Designations (Apr. 4, 2019)) 86:5-86:12; CX-1236C (Representative Accused
Products Stipulation). The Eonsmoke v2.0 device is compatible with the same pods as
35

PUBLIC VERSION
the Eonsmoke device. See CX-0016C (Alarcon WS) Q/A 63 .
JLI' s expert, Mr. Alarcon, reviewed various technical documents and product
samples regarding the Eonsmoke accused products, and concluded that they infringe and
are representative as stipulated. See CX-0016C (Alarcon WS) Q/A 84, 86-88 (detailing
evidence reviewed).
2. 	Infringement of Asserted Claims
a. 	Independent Claim 1
Each element of claim 1, including the preamble, is given a letter designation and
discussed individually below. See CX-0016C (Alarcon WS) Q/A 174-175.
Asserted claim 1 is recited below:
1. A cartridge for generating an aerosol, the cartridge comprising:
[a] a body including a storage compartment configured to hold
a vaporizable material, the body having a first end and a second
end opposite the first end, the body comprising a surface
between the frrst end and the second end;
[b] a heating element configured to generate the aerosol, the
generating of the aerosol comprising heating the vaporizable
material; and
[c] a mouthpiece secured over the first end, the mouthpiece
having a notch extending away from the second end towards
the first end, the mouthpiece covering a first portion of the
surface,
[d] the mouthpiece not covering a second portion of the
surface, the second portion of the surface configured for
insertion into a cartridge receptacle of a vaporizer device,
[e] the mouthpiece not covering a third portion of the surface,
the third portion of the surface comprising an area between the
notch and the second end, the third portion of the surface being
visible when the second portion of the surface is inserted into
the cartridge receptacle.
JX-0003 (' 669 Patent), claim 1.
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PUBLIC VERSION
The accused Eonsmoke pods practice claim element 1 [p] because each pod is a
cartridge and it may be used in a compatible device to generate aerosol. See id. at QIA
176-178, 182 (listing underlying evidence).
Claim l[al
The accused Eonsmoke pods practice claim element 1 [a] because each pod has a
body that includes a storage compartment holding a vaporizable material. See CX-0016C
(Alarcon WS) Q/A 184-185, 189 (listing underlying evidence). The body has a first and
second end that is opposite to the first end, and a surface between the first and second
ends. See CX-0016C (Alarcon WS) Q/A 184-185.
Claim l[bl
The accused Eonsmoke pods practice claim element 1[b] because each pod
includes a heating element in the form of a coil of wire. See CX-0016C (Alarcon WS)
Q/A 191-192, 196 (listing underlying evidence). See id. Q/A 198. The heating element
of each accused product includes at least a resistive coil, a pair of plates and contact tabs.
See id. 	The contact tabs are integrally formed with the respective plate and constitute
"contact tips." The resistive coil transforms electrical energy into heat. See id.
Therefore, the heating elements of the accused products include a heating element that
generates an aerosol as a result of heating the vaporizable material, which satisfies
element 1[b].
Claim l(cl
The accused Eonsmoke pods practice claim element 1[c] because each pod has a
dark-colored mouthpiece that is secured over the first end and includes a notch. See id. at
Q/A 203-204, 209. The notch extends away from the second end toward the first end.
37

PUBLIC VERSION
The mouthpiece covers a first portion of the surface. Each accused pod contains the
claimed notch. See id. at Q/A 203-204, 209.
Claim l[d)
Each of the accused Eonsmoke pods practice claim element 1[d] because the
mouthpiece of each pod does not cover a second portion. This second portion is
configured so that it may be inserted into the cartridge receptacle of a compatible
vaporizer device. See CX-0016C (Alarcon WS) Q/A 211-212, 216.
Claim l[e)
Each accused pod practices claim element 1[e] because the mouthpiece of the pod
does not cover a third portion. See CX-0016C (Alarcon WS) Q/A 218-219, 223 (listing
underlying evidence). Further, this third portion is between the notch and the second end
and more than a de minim is portion of the third portion is also visible when the second
portion is inserted into a suitable cartridge receptacle. See CX-0016C (Alarcon WS) Q/A
218-223.
Claim 2
All of the accused Eonsmoke pod~ practice claim 2. See CX-0016C (Alarcon
WS) Q/A 226-227, 231 . The mouthpiece of the pod is a dark opaque material, and the
surface of the body is transparent and the ·vaporizable material within is readily visible
through the surface. See CX-0016C (Alarcon WS) Q/A 226-231.
b. 	Dependent Claim 13
Asserted claim 13 is recited below:
12. An apparatus for generating an aerosol, the apparatus
comprising:
[a] a vaporizer device comprising a cartridge receptacle; and
38

PUBLIC VERSION
[b] a cartridge comprising:
a body including a storage compartment configured to hold
a vaporizable material, the body having a first end and a
second end opposite the first end, the body comprising a
surface between the first end and the second end;
[c] a heating element configured to generate the aerosol, the
generating of the aerosol comprising heating the
vaporizable material; and
[d] a mouthpiece secured over the first end, the mouthpiece
covering a first portion of the surface,
[e] the mouthpiece not covering a second portion of the
surface, the second portion of the surface configured for
insertion into the cartridge receptacle,
[f] the mouthpiece not covering a third portion of the
surface, the third portion of the surface being visible when
the second portion of the surface is inserted into the
cartridge receptacle.
13. The apparatus of claim 12, wherein the mouthpiece is opaque,
wherein the surface is transparent, and wherein the vaporizable 	·
material is visible through the surface.
JX-0003 (' 669 Patent), claims 12 , 13.
Claim 13 depends from claim 12 and recites a claimed vaporizer device and a
claimed cartridge. Thus, the combination of a vaporizer device and a cartridge directly
infringes claim 12 or 13 . The manufacture, import, or sale of either the claimed cartridge
or the claimed device alone indirectly infringes claim 12 or 13. The accused pods are
specifically constructed to be combined with an infringing device. See CX-0016C
(Alarcon WS) Q/A 233.
Claim 12[p1
The combination of any of the accused Eonsmoke devices with any compatible
pod practices claim element 12[p] because each combination, is an apparatus for
generating an aerosol. See CX-0016C (Alarcon WS) Q/A 234-235, 240.
39

PUBLIC VERSION
Claim 12(a)
All of the accused devices practice claim element 12[a]. The device is a vaporizer
device and includes a receptacle for a cartridge. See CX-0016C (Alarcon WS) Q/A 241-
242, 245. Separately sold pod products are not themselves vaporizing devices, but are
specifically constructed to be used with devices that practice the patent like a JUUL
device. When compatible pods are used with an infringing device as intended, these
products infringe claim 12. The accused pod products will infringe claim 12 when
combined with any infringing device, not just their corresponding branded device. See
CX-0016C (Alarcon WS) Q/A 246.
Claims 12(b)-(fl
Each of claim elements 12[b] through 12[f] is substantially similar to claim
elements l[a] through l[e], respectively. See id. at Q/A 248,250,252,254,256. The
accused products therefore practice claim 12 for the reasons above. Claim 13 is
substantially similar to claim 2. The only relevant difference is that claim 13 requires an
apparatus rather than only a cartridge. See CX-0016C (Alarcon WS) Q/A 259. Where
the cartridge at issue is combined with an infringing device to satisfy the non-cartridge
elements of claim 12, the analysis for claim 2, discussed above, applies equally to 13.
See id. Each of the accused pods therefore practices claim 13.
Inducement and Contributory Infringement
Eonsmoke makes, imports, and sells the accused devices and pods both separately
and packaged together as a kit. Under an indirect infringement analysis, end users are the
direct infringers. Eonsmoke offers its products for sale to the public on its website and
has admitted (CX-0018C (Tolmach Dep. Designations (Apr. 4, 2019)) 128, 130, 1340;
40

PUBLIC VERSION
CX-0026C (Grishayev Dep. Designations (Apr. 17, 2019)) 210) to selling the Eonsmoke
accused products to end users.
The only purpose of the accused cartridges and devices is to be combined into an
ENDS that meets every element of claim 13 . See CX-0016C (Alarcon WS) Q/A 68, 89,
161 . An act of direct infringement occurs when a user combines a cartridge with a
device, as intended by Eonsmoke.
Eonsmoke had the requisite knowledge and intent for indirect infringement at
least since district court suits alleging infringement of the ' 669 patent were filed in 2018.
See CX-1304C (4X Pods Blue Blackberry Packaging); CX-1302C (Eonsmoke Pods Ad);
CX-0407 (Eonsmoke v2.0 Juul Compatible); CX-1111 (Eonsmoke Instructions
Screenshot); CX-1112 (Eonsmoke Packaging Photo); CX-0170 (Eonsmoke Product &
Packaging Images 3); CX-0026C (Grishayev Dep. Designations (Apr. 17 , 2019)) 55-57;
CX-0018C (Tolmach Dep. Designations (Apr. 4, 2019)) 58-60, 81-83 , 184-186.
Additionally, JLI virtually marks each of its products with a website that contains a list of
issued patents covering the JUUL system. See CX-0016C (Alarcon WS) QIA 77, 97,
169. This website was updated to include the ' 669 patent by October 3, 2018. See id
Each of the accused products is a material part of an apparatus that infringes claim
13 . The accused Eonsmoke pods practice the majority of the elements of claim 13 and
the apparatus would be inoperative without the pod. See id at QIA 78-79, 98-99, 170-
171 . The accused pods and devices have no substantial noninfringing use. These	.
products are either cartridges specifically configured for use with infringing vaporizer
devices, or vice versa. See id. at QIA 80-81 , 100-101 , 172-1 73. Eonsmoke has not
identified any noninfringing pods or devices for which the accused pods or devices are
41

PUBLIC VERSION
compatible. These cartridges and devices have no use outside their use with a device as
an infringing ENDS. See id. at QIA 80-81 , 100-101 , 172-173.
C. 	Validity of the '669 Patent
Respondent Eonsmoke argues that (1) Tucker (RX-0109) alone renders obvious
claims 1, 2 and 13 of the ' 669 patent; and (2) Tucker (RX-0109) in combination with
Pentafragas (RX-0106) renders obvious claims 1, 2 and 13 of the ' 669 patent. See Resp.
Br. at 4-14. Eonsmoke argues and JLI and the Staff do not dispute that prior art alleged
by Eonsmoke are prior to the priority date of the ' 568 patent. See id. at 4.
1. 	Tucker (RX-0109) Alone
Respondent Eonsmoke argues that (1) Tucker (R.X-0109) alone renders obvious
claims 1, 2 and 13 of the ' 669 patent. See Resp. Br. at 4-12.
Eonsmoke argues, inter alia:
It is undisputed that Tucker (RX-0109) discloses the following
features of claim 1:
• 	A cartridge for generating an aerosol, the cartridge
compnsmg
• 	a body' including a storage compartment configured to hold
a vaporizable material, the body having a first end and a
second end opposite the first end, the body comprising a
surface between the first end and the second end;
• 	a heating element configured to generate the aerosol, the
generating of the aerosol comprising heating the
vaporizable material.
(CX-1353C.0037). The dispute for the invalidity of claim 1 is whether it
would have been obvious to modify Tucker' s mouthpiece to be secured
over the first end and include a notch. Expert witness Greg Flolid testified
that this modification would have been obvious to try from a finite number
of identified, predictable mouthpiece solutions, with a reasonable
expectation of success.
Resp. Br. at 4.
42

PUBLIC VERSION
For the reasons set forth below, Eonsmoke has not shown by clear and convincing
evidence that the asserted claims of the ' 669 patent are invalid.
Independent Claim 1
Asserted claim 1 is recited below:
1. A cartridge for generating an aerosol, the cartridge comprising:
[a] a body including a storage compartment configured to hold
a vaporizable material, the body having a first end and a second
end opposite the first end, the body comprising a surface
between the first end and the second end;
[b] a heating element configured to generate the aerosol, the
generating of the aerosol comprising heating the vaporizable
material; and
[c] a mouthpiece secured over the first end, the mouthpiece
having a notch extending away from the second end towards
the first end, the mouthpiece covering a first portion of the
surface,
[d] the mouthpiece not covering a second portion of the
surface, the second portion of the surface configured for
insertion into a cartridge receptacle of a vaporizer device,
[e] the mouthpiece not covering a third portion of the surface,
the third portion of the surface comprising an area between the
notch and the second end, the third portion of the surface being
visible when the second portion of the surface is inserted into
t?e cartridge receptacle.
JX-0003 ('669 Patent), claim 1.
Claim Uc]
Eonsmoke argues, inter alia:
Tucker discloses a mouthpiece (8), but the mouthpiece is not
secured over the first end; nor does the mouthpiece have a notch extending
away from the second end towards the first end with the mouthpiece
covering a first portion of the surface. However, as Mr . Flolid has
testified, this would have been an obvious modification to Tucker' s
mouthpiece. (RX-0113.0008-9, Q/A 29-32; Hearing Tr. 249:16-250:7;
298:2-300:4).
43

PUBLIC VERSION
Tucker discloses a mouthpiece which is fitted within the body of
the cartridge (as shown in Fig 1), as opposed to over the end of the
cartridge. In designing the mouthpiece, as Mr. Flolid has testified, there
would have been limited and predictable approaches to interfacing the
mouthpiece with the cartridge body. The mouthpiece fit to the cartridge
body must be either (1) inside, such as disclosed in the examples in
Tucker, (2) over the cartridge body, (3) attached to face, such as with glue
or screws or rivets, or (4) with combinations thereof. Each alternative
would have had a reasonable expectation of success and predictable
results.
Resp. Br. at 6.
Eonsmoke's expert Mr . Flolid identifies liquid supply reservoir 22 as the storage
compartment and cartridge 70 as the cartridge recited in element l[c]. Although he does
not explicitly identify the "body" that these elements relate to, it appears he considers the
body to be the outer tube 6. See CX-1353C (Alarcon Rebuttal WS) Q/A 89-90. Mr.
Flolid identifies mouth end insert 8 in Figure 1 as the mouthpiece but admits that mouth
end insert 8 is not secured over the first end, does not cover a first portion of the surface,
and does not have a notch extending away from the second end towards the first end as
claimed. See id. at Q/A 91 ; Flolid Tr. 246, 296-297. Mr. Flolid instead argues that a
person of ordinary skill in the art would have modified the mouth end insert 8 in two
ways. First, he modifies Tucker' s mouth end insert 8 to be a mouthpiece secured over the
frrst end instead of inside it. Second, he modifies Tucker' s mouth end insert 8 to have a
notch extending away from the second end towards the frrst end. A person of ordinary
skill in the art would not have been motivated to make either modification. See CX-
1353C (Alarcon Rebuttal WS) Q/A 91.
There would have been no reason to modify Tucker's mouth end insert 8 to be
secured over outer tube 6 as Mr. Flolid proposes. As an initial matter, modifying
44

PUBLIC VERSION
Tucker's mouth end insert 8 would have destroyed its principle of operation. Tucker's
invention is described as having two key features: a mouth end insert and air flow
diverter. See RX-0109 (Tucker), ,r [0030]. The mouth end insert 8 has off-axis diverging
outlets to provide an "improved aerosol output and/or better mouthfeel." See id 	Mr.
Flo lid's proposed_modifications to the Tucker mouth end insert 8 do not address how the
mouth end insert 8 would still achieve Tucker's goals if modified to be a mouthpiece
covering part of the cartridge rather than an insert within the cartridge. See CX-1353C
(Alarcon Rebuttal WS) Q/A 94.
Tucker never suggests how to redesign the mouthpiece to be placed outside of the
casing. See Flolid Tr. 247. Mr. Flolid opines that it would have been obvious to try this
option as it was allegedly only one of a finite number of possibilities for attaching a
mouthpiece to the cartridge. Yet, he identifies no market pressure or design need that
would have led a person of ordinary skill in the art to turn the mouth end insert 8 into a
mouthpiece attached to the outside of the cartridge. See CX-1353C (Alarcon Rebuttal
WS) QIA 95. In fact, there are numerous reasons why a person of ordinary skill would
not have made this modification. Modifying the mouth end insert 8 as Mr. Flolid
suggests to fit over the end of the cartridge instead would compromise the flush design of
Tucker, creating a discontinuity between the outer tube 6 and mouth end insert 8. This
discontinuity would make the modified mouthpiece prone to being dislodged or ripped
off from the cartridge. See id. 	The proposed modification would also increase the size of
Tucker's mouth end insert 8, thereby requiring more materials and taking up more space.
Requiring more material makes the device more costly to manufacture, and taking up
more space makes the device less convenient to use. In addition, the overall structure of
45

PUBLIC VERSION
Tucker's mouth end insert would need to be redesigned if its functionality were to be
retained. See id.
Even assuming that a person of ordinary skill would have modified Tucker' s
mouth end insert 8 to be secured over the end of outer tube 6, there would have been no
reason to further modify Tucker' s mouth end insert 8 to have the recited notch. Mr.
Flolid admits Tucker does not disclose a notch extending away from the second end
towards the first end. See RX-0113 (Flolid WS) Q/A 29. Mr . Flolid opines that it would
have been obvious to include a notch, so as not to block Tucker' s window. Mr. Flolid
admits that simply modifying Tucker' s mouth end insert 8 to extend over the casing
would not necessarily obstruct Tucker' s window. See Flolid Tr. 254.
The only way a modified mouth end insert 8 would obstruct Tucker' s window is
if the mouth end insert 8 were modified to extend further down. See CX-1353C (Alarcon
Rebuttal WS) Q/A 98. Mr. Flolid does not explain why a person of ordinary skill in the
art would have adopted the new design he suggests, when that modification would
require further modification to avoid compromising Tucker' s window. See id. 	Mr . Flolid
suggests that one could spontaneously redesign the mouthpiece to fit it over the casing,
and then extend the shoulder further down the casing until it obstructed the window. He
would therefore first create the problem of the window being obstructed- 	a problem that
does not need to be created and does not otherwise exist in Tucker. He would then solve
that problem by forming a notch in the mouthpiece shoulder. See Flolid Tr. 254. Like
extending the mouth end insert 8 over the casing, extending mouth end insert 8
downward to cover the window would also increase the size of Tucker' s components, .
thereby requiring more materials and taking up more space-both of which are
46

PUBLIC VERSION
undesirable results. See CX-1353C (Alarcon Rebuttal WS) at Q/A 98. Indeed, even if
Tucker's mouth end insert 8 extended over a portion of the window, Mr. Flolid admits
that Tucker's window would remain functional. Flolid Tr. 301.
Mr. Flolid's analysis is an example of using the claims as a blueprint to reverse
engineer the prior art to arrive at the claimed features, and should therefore be rejected.
Active Video Networks, Inc. v. Verizon Commc 'ns, Inc., 694 F.3d 1312, 1327 (Fed. Cir.
2012); Yamanouchi Pharm. Co. v. Danbury Pharmacal, Inc., 231 F.3d 1339, 1343 (Fed.
Cir. 2000) (cautioning against using the claimed invention itself as a blueprint for piecing
together elements in the prior art to defeat the patentability of the claimed invention); In
re Cyclobenzaprine Hydrochloride, 676 F.3d 1063, 1079 (Fed. Cir. 2012). A person of
ordinary skill in the art would not have further modified Tucker's mouth end insert 8 to
obstruct the window and, thus, there is no motivation to add a notch. See CX-1353C
(Alarcon Rebuttal WS) Q/A 99.
Claim l(d)
For element l[d], Eonsmoke argues:
Tucker as modified would have a mouthpiece not covering a
second portion of the surface, the
second portion of the surface
configured for insertion into a cartridge
receptacle of a vaporizer device.
Tucker includes a portion of its
cartridge that would not have been
covered by the modified mouthpiece
24
and would have been configured for insertion into a cartridge receptacle of
a vaporizer device (72). (RX-0113.0010, Q/A 33).
Resp. Br. at 7.
12
For element l[d], Mr. Flolid opines that Tucker "as modified, alone or in view of
47

PUBLIC VERSION
Pentafragas," would disclose this element. See RX-0113 (Flolid WS) Q/A 33. It is
unclear what he means by "as modified," or what elements of Tucker correspond to the
first and second portions of the surface. Mr. Flo lid appears to identify the threaded
connection as the claimed .second portion of the surface of the body. See id at Q/A 100.
Tucker' s threaded connection mechanism is a separate and distinct structure from outer
tube 6, which Mr. Flolid asserts includes the claimed first portion of the surface of the
body. Inasmuch as the threaded connection is separate from the outer tube 6, it cannot
include a second portion of the surface, which according to Mr . Flo lid is defined in part
by outer tube 6. See id. Mr. Flolid provides no suggestion or motivation to modify any
component of Tucker besides the mouth end insert. He has not shown that Tucker
renders obvious the recited first and second portions of the surface. See id
Claim l[e)
Mr. Flolid' s analysis of element 1[e ], presents similar issues as element 1[d]. He
does not identify what component of Tucker he relies on to teach the third portion. It
appears that window 71 is the third portion, but Tucker does not teach a notch and
therefore cannot teach a "third portion of the surface comprising an area between the
notch and the second end." See id at Q/A 101. Claim 1 is therefore not obvious.
Dependent Claim 2
Asserted claim 2 is recited below:
2. The cartridge of claim 1, wherein the mouthpiece is opaque,
wherein the surface is transparent, and wherein the vaporizable
material is visible through the surface.
JX-0003 ('669 Patent), claim 2.
Eonsmoke has not shown that Tucker renders claim 2 obvious. First, claim 2 is
48

PUBLIC VERSION
not obvious for at least the reasons discussed for claim 1 from which it depends. Mr .
Flolid states that Tucker discloses the mouth end insert (8) and that it is opaque, but he
does not cite evidentiary support. Tucker is silent about the opaqueness of mouth end
insert 2. Additionally, the transparent surface recited in claim 2 is the same surface
recited in claim 1 that includes a "second portion" configured for insertion into a
cartridge receptacle of a vaporizer device. Inasmuch as he has not explicitly identified
what he considers as the body, Mr. Flolid has not identified what surface must be
transparent. If Tucker were modified as Mr . Flolid suggests for claim 1, and the second
portion were inserted into the receptacle, then it would require the vaporizable material to
be seen through the threaded coupling of Tucker's cartridge. Mr. Flolid does not explain
how this is possible in a practical or manufacturing sense. See CX-1353C (Alarcon
Rebuttal WS) Q/A 102.
Dependent Claim 13
Asserted claim 13 is recited below:
12 . [p] An apparatus for generating an aerosol, the apparatus
compnsmg:
[a] a vaporizer device comprising a cartridge receptacle; and
[b] a cartridge comprising:
[c] a body including a storage compartment configured to
hold a vaporizable material, the body having a first end and
a second end opposite the first end, the body comprising a
surface between the first end and the second end;
[ d] a heating element configured to generate the aerosol,
the generating of the aerosol comprising heating the
vaporizable material; and
[e] a mouthpiece secured over the first end, the mouthpiece
covering a first portion of the surface, the mouthpiece not
covering a second portion of the surface, the second portion
of the surface configured for insertion into the cartridge
49

PUBLIC VERSION
receptacle, the mouthpiece not covering a third portion of
the surface, the third portion of the surface being visible
when the second portion of the surface is inserted into the
cartridge receptacle.
13. The apparatus of claim 12, wherein the mouthpiece is opaque,
wherein the surface is transparent, and wherein the vaporizable
material is visible through the surface.
JX-0003 ('669 Patent), claims 12 , 15 and 13.
Claim 13 , which depends from claim 12 , is not rendered obvious by Tucker. CX-
1353C (Alarcon Rebuttal WS) QIA 103-104. At least elements 12[c], and 12[e] are not
taught by Tucker. Element 12[c] corresponds to element l[a], and element 12[e]
corresponds to elements l[c] , l[d], and l[e]. Thus, Tucker does not render elements
12[c] and 12[e] obvious for at least the same reasons discussed above for elements 1 [a] ,
1[c], 1[d] , and 1[e]. Id. at QIA 105. Claim 13 adds a limitation similar to claim 2. Claim
13 is therefore not rendered obvious for the same reasons discussed above for claim 2.
Id. at QIA 106.
2. 	Tucker (RX-0109) and Pentafragas (RX-0106)
Eonsmoke argues that Tucker (RX-0109) in combination with Pentafragas (RX-
0106) renders obvious claims 1, 2 and 13 of the ' 669 patent. See Resp. Br. at 12-14.
Eonsmoke argues:
Tucker discloses the limitations of claims 1, 2, and 13 set forth
above. Regarding the limitation "a mouthpiece secured over the first
end, the mouthpiece having a notch extending away from the second
end towards the first end, the mouthpiece covering a first portion of
the surface" in claim 1, as one alternative to being obvious over Tucker
15 JLI has given a letter designation for each element of the asserted independent claims.
The letter designations used for the elements of this claim is different for infringement
and validity analysis. The administrative law judge is adopting the different letter
designations as appropriate.
50

PUBLIC VERSION
alone, this would have been an obvious modification to Tucker in view of
US2005/0252511Al to Pentafragas. (RX-0113 .0008-9, Q/A 31-32).
Pentafragas discloses an inhalation device having a
mouthpiece (A) secured over the first end, the mouthpiece
having a notch extending away from the second end towards the
first end, the mouthpiece covering a first portion of the surface.
. (RX-0106.0002, Figure 1).
It would have been obvious to a sophisticated observer
like the POSA at issue here to modify Tucker to include a
similar mouthpiece to that of Pentafragas having a notch to
accommodate functionality of the rest of the device, as taught by
Pentafragas regarding the cover sheet 20. (RX-0113 .0008-9, Q/A 31-32).
In Tucker' s case, the functionality of the rest of the device accommodated
by the notch would have been the liquid viewing window 71. A POSA
would have been motivated to make this modification to Tucker' s
mouthpiece to preserve Tucker' s window benefit. (RX-0113 .0008-9, Q/A
31-32). KSR Int '/ Co. v. Teleflex Inc., 550 U.S. 398, 405, 127 S. Ct. 1727,
1734 (2007).
Additionally, it would have been obvious to modify Tucker to
include a similar mo~thpiece to that of mouthpiece of Pentafragas as a
simple substitution of one known type of mouthpiece for another. KSR ,
550 U.S. at 416 ("when a patent claims a structure already known in the
prior art that is altered by the mere substitution of one element for another
known in the field, the combination must do more than yield a predictable
result." ).
Resp. Br. at 12-13 (emphasis in original).
Independent Claim 1
Asserted claim 1 is recited below:
1. A cartridge for generating an aerosol, the cartridge comprising:
[a] a body including a storage compartment configured to hold
a vaporizable material, the body having a first end and a second
end opposite the first end, the body comprising a surface
between the first end and the second end;
[b] a heating element configured to generate the aerosol, th~
generating of the aerosol comprising heating the vaporizable
material; and
[c] a mouthpiece secured over the first end, the mouthpiece
having a notch extending away from the second end towards
51
8

PUBLIC VERSION
the first end, the mouthpiece covering a first portion of the
surface,
[d] the mouthpiece not coyering a second portion of the
surface, the second portion of the surface configured for
insertion into a cartridge receptacle of a vaporizer device,
[e] the mouthpiece not covering a third portion of the surface,
the third portion of the surface comprising an area between the
notch and the second end, the third portion of the surface being
visible when the second portion of the surface is inserted into
the cartridge receptacle.
JX-0003 (' 669 Patent), claim 1.
Claim l(c) 	·
Tucker in view of Pentafragas does not disclose elements 1[c] , 1[d] , and 1[e] . See
CX-1353C (Alarcon Rebuttal WS) Q/A 88. Mr. Flolid suggests that a person of ordinary
skill in the art would have substituted the mouth end insert of Tucker with the
mouthpiece of Pentafragas, which allegedly fits over another component. He does not
explain why a person of ordinary skill would have been motivated to do such a
substitution, or what functionality a person of ordinary skill would seek to import from
Pentafragas. Indeed, the Pentafragas reference is directed towards a dry powder inhaler,
not an ENDS device li~e Tucker' s. See CX-1353C (Alarcon Rebuttal WS) Q/A 96.
There is no explaJ?,ation by Mr . Flolid why a person of ordinary skill in the art would have
looked to a dry powder inhaler to modify an ENDS device or have an expectation of
success in doing so.
The function of Pentafragas' s alleged notch and Tucker' s window are
substantially different. Pentafragas' s alleged notch is to provide a user physical access to
the end of a blister strip. Tucker' s window is to provide a viewing window for the
contained liquid. See CX-1353C (Alarcon Rebuttal WS) Q/A 96. Tucker' s mouth end
52

PUBLIC VERSION
insert 8 and Pentafragas' s mouthpiece A are structurally different. See RX-0106
(Pentafragas), ,r [0007] ; CX-1353C (Alarcon Rebuttal WS) Q/A 96; Flolid Tr. 278-279.
As such, the modification proposed by Mr. Flolid is far from a simple substitution of
elements. Combining the references would require a substantial redesign of either
system. Tucker in view of Pentafragas thus does not render obvious claim element 1[c].
See id. at Q/A 97.
Claim l(dl
For element 1[d] , Mr . Flo lid opines that Tucker "as modified, alone or in view of
Pentafragas," would disclose this element. See RX-0113 (Flolid WS) Q/A 33. It is
unclear what he means by 'las modified," or what elements of Pentafragas may be
relevant to this limitation. See id. at Q/A 100. Mr . Flolid provides no suggestion or
motivation to modify any component of Tucker besides the mouth end insert. Eonsmoke
has not shown that Tucker, alone or in combination with Pentafragas, renders obvious the
recited first and second portions of the surface. See id.
Claim l(el
Mr. Flolid' s analysis of element l[e], presents similar issues as element l[d]. He
does not identify what component of Tucker or Pentafragas he relies on to allegedly teach
the third portion. It appears that window 71 is the third portion, but Tucker does not
teach a notch and therefore cannot teach a "third portion of the surface comprising an
area between the notch and the second end." See id. at QIA l O1. Claim 1 is therefore not
obvious.
Eonsmoke has not shown that Tucker in combination with Pentafragas renders
claim 2 obvious. Mr. Flolid' s opinion for claim 2 is conclusory and does not appear to
53

PUBLIC VERSION
rely on Pentafragas. In particular, claim 2, which depends from claim 1, is not rendered
obvious for at least the reasons discussed previously for claim 1. Additionally, for claim
2, he merely states that Tucker discloses the mouthpiece (8) and that it is opaque.
However, he does not cite evidentiary support. Inasmuch as he has not explicitly
identified what he considers the body to be, he has not identified what surface he
considers to be transparent. He references the window 71 , but the window 71 is not the
claimed third portion of the body, so he has not shown that the surface is transparent.
Additionally, if Tucker were modified as Mr . Flolid suggests for claim 1, and the second
portion were somehow inserted into the receptacle, it would require the vaporizable
material to be seen through the threaded coupling. Mr . Flolid does not explain how this
is possible in a practical or manufacturing sense. See CX-1353C (Alarcon Rebuttal WS)
Q/A 102.
Dependent Claim 13
Asserted claim 13 is recited below:
12. [p] An apparatus for generating an aerosol, the apparatus
comprising:
[a] a vaporizer device comprising a cartridge receptacle; and
[b] a cartridge comprising:
[c] a body including a storage compartment configured to
hold a vaporizable material, the body having a first end and
a second end opposite the first end, the body comprising a
surface betwe·en the first end and the second end;
[ d] a heating element configured to generate the aerosol,
the generating of the aerosol comprising heating the
vaporizable material; and
[e] a mouthpiece secured over the first end, the mouthpiece
covering a frrst portion of the surface, the mouthpiece not
covering a second portion of the surface, the second portion
of the surface configured for insertion into the cartridge
54

PUBLIC VERSION
receptacle, the mouthpiece not covering a third portion of
the surface, the third portion of the surface being visible
when the second portion of the surface is inserted into the
cartridge receptacle.
13. The apparatus of claim 12, wherein the mouthpiece is opaque,
wherein the surface is transparent, and wherein the vaporizable
material is visible through the surface.
JX-0003 (' 669 Patent), claims 12 , and 13 .
Claim 13 , which depends from claim 12 , is not rendered obvious by Tucker in
combination with Pentafragas. See CX-1353C (Alarcon Rebuttal WS) Q/A 103-104. At
least elements 12[c], and 12[e] are not taught by Tucker in view of Pentafragas. Element
12 [c] corresponds to element 1[a], and element 12 [e] corresponds to elements 1[c] , 1[d],
and 1[e] . Thus, Tucker in view of Pentafragas does not render elements 12 [c] and 12 [e]
obvious for at least the same reasons discussed above for elements l[a], 1 [c] , 1 [d] , and
1 [e] . See CX-1353C (Alarcon Rebuttal WS) Q/A 105 . Claim 13 adds a limitation
similar to claim 2 ("wherein the mouthpiece is opaque, wherein the surface is transparent,
and wherein the vaporizable material is visible through the surface" ). Claim 13 is
therefore not rendered obvious for the same reasons discussed above for claim 2. See id
at Q/A 106.
D. 	Domestic Industry (Technical Prong)
Complainant asserts claims 1, 2, 13 , 14 , and 20 of the '669 patent for domestic
industry. See Compls. Br. at 30 (citing CX-0016C (Alarcon WS) Q/A 264). The JUUL
system includes the JUUL device and JUULpod. CX-0016C (Alarcon WS) Q/A 262.
The JUUL device is a reusable component that includes a battery and electronic circuitry
for powering the heater in the JUULpod. The JUULpod is a cartridge that is prefilled
55

PUBLIC VERSION
with a nicotine-containing liquid. 	The JUULpod is inserted into the JUUL device and
includes a mouthpiece through which the user inhales an aerosol that contains droplets of
the liquid Id. at Q/A 263.
Mr. Alarcon physically inspected the JUUL system, including the JUUL device
and JUULpod. See CX-0016C (Alarcon WS) Q/A 266. He also reviewed numerous
documents and materials including photographs of physical samples of the JUUL system,
marketing materials including advertisements, product packaging, user manuals,
information available on public webpages and the like, and technical documents such as
engineering drawings and presentations describing the structure and assembly of the
JUUL system. See CPX-0067C (JLI Animation) depicts the JUUL system. Mr. Alarcon
also reviewed numerous documents describing various aspects of the JUUL system. See
CX-0016C (Alarcon WS) Q/A 267 (listing documents reviewed).
1. 	Independent Claim 1
Asserted claim 1 is recited below:
1. A cartridge for generating an aerosol, the cartridge comprising:
[a] a body including a storage compartment configured to hold
a vaporizable material, the body having a first end and a second
end opposite the first end, the body comprising a surface
between the first end and the second end;
[b] a heating element configured to generate the aerosol, the
generating of the aerosol comprising heating the vaporizable
material; and
[c] a mouthpiece secured over the first end, the mouthpiece
having a notch extending away from the second end towards
the first end, the mouthpiece covering a first portion of the
surface,
[d] the mouthpiece not covering a second portion of the
surface, the second portion of the surface configured for
insertion into a cartridge receptacle of a vaporizer device,
56

PUBLIC VERSION
[e] the mouthpiece not covering a third portion of the surface,
the third portion of the surface comprising an area between the
notch and the second end, the third portion of the surface being
visible when the second portion of the surface is inserted into
the cartridge receptacle.
JX-0003 ('669 Patent), claim 1.
Claim l(pl
The JUUL system, particularly, the JUULpod, includes each and every element of
claim 1 of the '669 patent. See CX-0016C (Alarcon WS) Q/A 269. The JUULpod
practices element l[p]. As shown in CX-1202 (JUUL Photo Set 3), the JUULpod is a
cartridge, which is used with the JUUL device to generate an aerosol. As such, the
JUULpod practices the preamble. See CX-0016C (Alarcon WS) Q/A 270.
Claim l(al
The JUULpod practices element l[a] as shown in CX-1202 (JUUL Photo Set 3),
CX-0369C (JLI Step 1), and CX-0388C (JLI Image). For example, as shown in CX-1202
(JUUL Photo Set 3), the hJULpod has a body that includes a storage compartment
holding a vaporizable material. The JUULpod's body has a first end and a second end
that is opposite to the first end, and there is a surface between the first end and the second
en~. See CX-0016C (Alarcon WS) Q/A 271.
Claim l(bl
The JUULpod satisfies element l[b]. See CX-1202 (JUUL Photo Set 3); CX-
0369C (JLI Step 1); CX-0379C (JLI Step 13); CX-0380C (JLI Step 14); CX-0381C (JLI
Step 15); CX-0382C (JLI Step 19); CX-0383C (JLI Step 21), CX-1202 (JUUL Photo .Set
3), CX-0384C (JLI Step 25), CX-0385C (JLI Step 26), CX-0386C (JLI Step 27), CX-
0387C (JLI Step 28). As shown in CX-1202 (JUUL Photo Set 3), CX-0384C (JLI Step
57

PUBLIC VERSION
25), CX-0385C (JLI Step 26), CX-0386C (JLI Step 27), CX-0387C (JLI Step 28), for
example, the JUULpod includes a heating element in the form of a coil of wire. The
heating element includes at least a resistive coil, a pair of plates and contact tabs. The
contact tabs are integrally formed with the respective plate. See CX-0016C (Alarcon
WS) Q/A272.
The heating element of the JUULpod is configured to generate an aerosol.
Electrical energy passes from the JUUL device battery through the electrical contacts to
the heating element, which converts the electrical energy to heat. The heating element is
wrapped around a wick. The heat from the heating element raises the temperature of the
wick and the vaporizable material within the wick to generate a vapor. The vapor
immediately disperses with air at the heating element and an aerosol is immediately
formed. Id. at Q/A 273 .
Claim Uc)
The JUULpod satisfies element l[c]. See CX-1202 (JUUL Photo Set 3); CX-
0369C (JLI Step 1) ; CX-0388C (JLI Image). The JUULpod includes a mouthpiece that is
secured over the first end of the body of the cartridge.
No tch ex tending away from
second end tow ards the first en d
58

PUBLIC VERSION
Fint ponion = out lined in llf"ll
econd portion ~ outlined in red
Third portion s outlined in bl ue
CX-1202.0001-.0002, .0016-.0017, (JUUL Photo Set 3) (annotated).
The upper left images of CX-1202 (JUUL Photo Set 3) show the notch of the
mouthpiece, highlighted in green. The lower images of CX-1202 (JUUL Photo Set 3)
show the first portion of the surface, also outlined in green, that is covered by the
mouthpiece when the mouthpiece is secured over the first end. The mouthpiece's notch
extends away from the second end towards the first end. As shown in CX-1202 (JUUL
Photo Set 3); CX-0369C (JLI Step 1); CX-0388C (JLI Image), the notch is a cut-out
region from an edge of the mouthpiece. See CX-0016C (Alarcon WS) Q/A 276.
Claim l(d)
The JUULpod satisfies element l[d]. See CX-1202 (Juul Photo Set 3); CX-
0369C (JLI Step 1); CX-0388C (JLI Image); CX-0389C (JLI Step 5).
The mouthpiece, discussed above for element 1[c], does not cover a second
portion of the surface, which is outlined in red. The second portion of the surface is
configured for insertion into a cartridge receptacle of a vaporizer device, such as the
JUUL device, as shown in CX-1202 (JUUL Photo Set 3). Thus, the JUULpod's
mouthpiece does not cover a second portion of the surface that is configured for insertion
into a cartridge receptacle of a vaporizer device as recited in element 1[d]. CX-0016C
59

PUBLIC VERSION
(Alarcon WS) Q/A 277.
Claim l(e)
The nJULpod satisfies element l[e]. See CX-1202 (nJUL Photo Set 3). The
mouthpiece, as discussed for element l[c], does not cover a third portion of the surface,
which is outlined in blue in CX-1202 (nJUL Photo Set 3). This third surface portion
includes an area between the notch and the second end and is visible when the second
portion of the surface of the nJULpod is inserted into the nJUL device as shown in CX-
1202 (nJUL Photo Set 3). See CX-0016C (Alarcon WS) Q/A 278.
2. 	Dependent Claim 2
Asserted claim 2 is recited below:
2. The cartridge of claim 1, wherein the mouthpiece is opaque,
wherein the surface is transparent, and wherein the vaporizable
material is visible through the surface.
JX-0003 (' 669 Patent), claim 2.
Claim 2 depends from claim 1, and requires that "the mouthpiece is opaque," "the
surface is transparent," and "the vaporizable qiaterial is visible through the surface." The
nJULpod includes every element of claim 1 as explained above. See CX-0016C
(Alarcon WS) QIA 280. The nJULpod practices every element of claim 2. See CX-l 202
(nJUL Photo Set 3). The mouthpiece is opaque, and the surface of the body is
transparent such that the vaporizable material is visible through the surface. See CX-
0016C (Alarcon WS) Q/A 282; CX-1202 (nJUL Photo Set 3).
3. 	Dependent Claim 20
Asserted claim 20 is recited below:
60

PUBLIC VERSION
20. The cartridge of claim 1, further comprising the vaporizable
material within the storage compartment, wherein the vaporizable
material comprises a nicotine formulation.
JX-0003 ('669 Patent), claim 20.
Claim 20 depends from claun 1, and requires that the cartridge "further
compris[es] the vaporizable material within the storage compartment, wherein the
vaporizable material comprises a nicotine formulation." The JUULpod includes every
element of claim 1 as explained above. See CX-0016C (Alarcon WS) Q/A 283-284. The
JUULpod practices claim 20 because the storage compartment of the JUUL pod contains
a nicotine-containing liquid. See CX-0016C (Alarcon WS) Q/A 285; CX-1202 (JUUL
Photo Set 3).
4. 	Dependent Claim 13
Asserted claim 13 is recited below:
12. An apparatus for generating an aerosol, the apparatus
comprising:
[a] a vaporizer device comprising a cartridge receptacle; and
[b] a cartridge comprising:
a body including a storage compartment configured to hold
a vaporizable material, the body having a first ep.d and a
second end opposite the first end, the body comprising a
surface between the first end and the second end;
[c] a heating element configured to generate the aerosol, the
generating of the aerosol comprising heating the
vaporizable material; and
[d] a mouthpiece s ecured over the first end , the mouthpiece
covering a first portion of the surface,
[e] the mouthpiece not covering a second portion of the
surface, the second portion of the surface configured for
insertion into the cartridge receptacle,
[f] the mouthpiece not covering a third portion of the
surface, the third portion of the surface being visible when
61

PUBLIC VERSION
the second portion of the surface is inserted into the
cartridge receptacle.
13. The apparatus of claim 12, wherein the mouthpiece is opaque,
wherein the surface is transparent, and wherein the vaporizable
material is visible through the surface.
JX-0003 (' 669 Patent), claims 12 , 16 13.
Claim 13 depends from independent claim 12. Claim 12 is substantially similar to
claim 1, except that claim 12 is an apparatus claim that requires both a vaporizer device
and a cartridge. See CX-0016C (Alarcon WS) Q/A 286-290; CX-1202 (JUUL Photo Set
3); CX-0369C (JLI Step 1); CX-0388C (JLI Image); CX -0379C (JLI Step 13); CX-
0380C (JLI Step 14); CX-0381C (JLI Step 15); CX-0382C (JLI Step 19); CX-0383C (JLI
Step 21). Element 12[b] corresponds to the preamble of claim 1 and element l[a].
Elements 12[c] through 12 [f] are materially identical to elements l[b] through l[e] ,
respectively. Accordingly, the JUUL system includes each of elements 12[b], [c], [d], [e]
and [f] for the same reasons explained above regarding the preamble and elements 1[a],
[b], [c], [d], and [e] of claim 1. See CX-0016C (Alarcon WS) Q/A 292; CX-1202 (JUUL
Photo Set 3); CX-0369C (JLI Step 1); CX-0388C (JLI Image); CX-0379C (JLI Step 13);
CX-0380C (JLI Step 14); CX-0381C (JLI Step 15); CX-0382C (JLI Step 19); CX-0383C
(JLI Step 21 ). The JUUL system thus includes every element of claim 12 of the ' 669
patent. CX-0016C (Alarcon WS) Q/A 288.
The combination of the JUUL device and the JUULpod is an apparatus for
16 JLI has given a letter designation for each element of the asserted independent claims.
The letter designations used for the elements of this claim is different for technical prong
and validity analysis. The administrative law judge is adopting the different letter
designations as appropriate.
62

PUBLIC VERSION
generating an aerosol as recited in claim 12. See CX-0016C (Alarcon WS) Q/A 289-291;
CX-1202 (JUUL Photo Set 3). Element 12[a] recites "a vaporizer device comprising a
cartridge receptacle." See CX-1202 (JUUL Photo Set 3). The JUUL device is an ENDS
device, which is a type of vaporizer device. The JUUL device includes a receptacle for
receiving a cartridge. See CX-0016C (Alarcon WS) Q/A 294-295; CX-1202 (JUUL
Photo Set 3); CX-0369C (JLI Step 1); CX-0388C (JLI Image); CX-0379C (JLI Step 13);
CX-0380C (JLI Step 14); CX-0381C (JLI Step 15); CX-0382C (JLI Step 19); CX-03.83C
(JLI Step 21). Claim 13 is similar to claim 2 and thus reads on the JUUL system for the
same reasons. See CX-0016C (Alarcon WS) Q/A 297; CX-1202 (JUUL Photo Set 3).
5. 	Dependent Claim 14
Asserted claim 14 is recited below:
14. The apparatus of claim 12, wherein the mouthpiece comprises
a notch extending away from the second end of the body towards
the first end of the body, and wherein the third portion of the
surface comprises an area between the notch and the second end of
the storage compartment.
JX-0003 ('669 Patent), claim 14.
Claim 14 depends from claim 12 and requires that "the mouthpiece comprises a
notch extending away from the second end of the body towards the first end of the body,
and wherein the third portion of the surface comprises an area between the notch and the
second end of the storage compartment." The JUUL system practices claim 14. See CX-
1202 (JUUL Photo Set 3); CX-0369C (JLI Step 1); CX-0388C (JLI Image).
63

PUBLIC VERSION
ond
end
CX-1202.0017 (JUUL Photo Set 3) (annotated).
Particularly, the annotated images of CX-1 202 (JUUL Photo Set 3) shown above show
that the mouthpiece of the JUULpod includes a notch (which is highlighted in green) that
extends away from the second end of the body towards the first end of the body.
Annotated image CX-1202 (JUUL Photo Set 3) shows that the third portion of the surface
includes an area between the notch and the second end of the storage compartment. See
CX-0016C (Alarcon WS) Q/A 300.
V. 	U.S. Patent No. 10,045,568
United States Patent No. 10 ,045,568 ("the ' 568 patent"), entitled "Vaporization
device systems and methods," issued on August 14 , 2018. JX-0001 (' 568 Patent). The
' 568 patent issued from Application No. 15 /832,749, filed on December 5, 2017. Id.
The ' 568 patent application is a continuation of, and claims priority to, Application No.
15/379,898, filed on December 15 , 2016, which is a continuation-in-part of other patent
applications. The ' 568 patent relates to "apparatuses, including systems and devices, for
vaporizing material to form an inhalable aerosol. Specifically, these apparatuses may
include vaporizers." JX-0001 , 1:64-67. The ' 568 patent has a total of20 claims.
Complainant asserts claims 12 , 17 and 20 of the ' 568 patent. See Compl. Br. at
64

PUBLIC VERSION
14. As discussed below, the evidence shows that (1) the asserted claims are infringed by
the accused products; (2) complainant has satisfied the technical prong of the domestic
industry requirement; and (3) the asserted claims are not invalid.
Asserted claims 12, 17 and 20 are recited below:
12. A cartridge for use with a vaporization device, the cartridge
comprising:
[a] a flattened body having a proximal end, a distal end
opposite the proximal end, a longitudinal axis between the
proximal end and the distal end, and a transverse axis that is
perpendicular to and shorter than the longitudinal axis;
[b] a reservoir within the flattened body and holding a
vaporizable material;
[c] a mouthpiece proximate to the proximal end of the flattened
body;
[d] a heater comprising:
a pair of plates extending in a direction of the longitudinal
axis,
[e] a wick extending along at least the transverse axis, at
least a first portion of the wick disposed between the pair of
plates, and at least a second portion of the wick disposed
within the reservoir and in contact with the vaporizable
material, and
[f] a resistive heating element directly in contact with each
plate of the pair of plates and in thermal contact with the
wick;and
[g] a pair of flat contact tabs integrally formed from the pair of
plates and folded over an outer surface of the flattened body
proximate to the distal end of the flattened body, the pair of flat
contact tabs extending from the heater and configured to
complete a circuit with the vaporization device when the distal
end is inserted into the vaporization device.
17. The cartridge of claim 12, wherein the mouthpiece is coupled
to the flattened body with a snap-fit coupling.
65

PUBLIC VERSION
20. An apparatus comprising:
a vaporizer body comprising:
a power source;
a cartridge receptacle; and
a pair of contacts within the cartridge receptacle; and
[a] a cartridge comprising:
a flattened body having a proximal end, a distal end
opposite the proximal end, a longitudinal axis between the
proximal end and the distal end, and a transverse axis that
is perpendicular to and shorter than the longitudinal axis;
[b] a mouthpiece proximate to the proximal end of the
flattened body;
[c] a reservoir within the flattened body, the reservoir
configured to hold a vaporizable material;
[d] a pair of plates extending in a direction of the
longitudinal axis;
[e] a wick extending along at least the transverse axis, at
least a first portion of the wick disposed between the pair of
plates;
[f] a resistive heating element in contact with the pair of
plates and the wick, wherein at least a second portion of the
wick is configured to contact the vaporizable material when
the vaporizable material is present; and
[g] a pair of flat contact tabs integrally formed from the
pair of plates and folded over an outer surface of the
flattened body proximate to the distal end of the flattened
body, the pair of flat contact tabs configured to complete a
circuit with the pair of contacts and the power source when
the distal end is inserted into the cartridge receptacle.
JX-0001 (' 568 Patent), claims 12 , 17 , 20.
A. 	Claim Construction 17
17 Respondent Eonsmoke did not discuss any of the disputed claim terms on the merits in
its posthearing briefs. See Joint Outline - Eonsmoke; and Joint Reply Outline -
Eonsmoke. Indeed, Eonsmoke' s only statement concerning claim construction is the
following:
66

PUBLIC VERSION
1. 	A Person of Ordinary Skill in the Art
Complainant argues:
A person of ordinary skill in the art (" POSA") is one who is
presumed to be aware of all pertinent art, thinks along conventional
wisdom in the art, and is a person of ordinary creativity. A POSA in the
context of the asserted patents would have had (1) a B. S. in mechanical
engineering, electrical engineering, or an equivalent degree and (2) at least
one year of experience designing consumer products. CX-001 SC (Collins
WS) Q/A 33; CX-0016C (Alarcon WS) Q/A 22.
Ziip' s expert, Mr . Flolid has proposed that a POSA would have at
least a bachelor' s degree in mechanical engineering, electrical
engineering, or an equivalent degree. RX-0113 (Flolid WS) Q/A 19.
Alternatively, Mr. Flolid opined that a POSA could also have had at least
two years' experience designing, developing, or testing electronic
cigarettes or related electromechanical devices, such as electromechanical
devices configured to heat liquid and generate an aerosol. Id. at Q/A 20.
Mr. Flolid further opines that his definition is only "approximate" and that
a skilled artisan could have a higher level of education to make up for less
experience or a higher level of training or skill to make up for less
education. Id. at Q/A 19. Mr. Flolid' s definition of a POSA is vague and
incorrect. CX-1353C (Alarcon Rebuttal WS) Q/A 41-42; CX-0015C
(Collins WS) Q/A 34. Regardless, the differences between JL I' s proposed
qualifications for a POSA and those proposed by Respondents would not
change JLI's infringement or validity analysis. CX-0015C (Collins WS)
Q/A 35; CX -1353C (Alarcon Rebuttal WS) Q/A 42.
Compl. Br. at 18-19 (citations omitted).
Respondent argues:
The key decision is the definition of a POSA. Both parties agree
that a POSA would have at least a degree in mechanical or electrical
engineering or a similar degree. And both agree that this POSA would
have some design experience with products. Ziip proposes that this
experience would be at least two years with electronic cigarettes or related
Ziip applies the agreed upon constructions for any terms that had
agreed upon constructions, as set forth in the Joint Claim Construction
Chart. Otherwise, Ziip applies the plain and ordinary meaning of the term.
Resp. Br. at 3-4.
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PUBLIC VERSION
electromechanical devices because this is the subject matter of the patents
at issue.
Ziip' s definition is a better one:
A person of ordinary skill in this art would have (1) at least a B.S .
in mechanical engineering, electrical_engineering, or an equivalent
degree and/or (2) at least two years' experience designing,
developing, or testing electronic cigarettes or related
electromechanical devices, such as electromechanical devices
configured to heat liquid and generate an aerosol. This description
is approximate, and a higher level of training or skill might make
up for less education, and vice-versa.
(RX-0113 .0005-6, Q/A 18-20).
Juul has proposed a far broader definition - one year designing
consumer products - because Juul wants its POSA to be as ignorant as
possible so as not to see the connections that Ziip claims are obvious. But
Juul's definition is deficient, as its expert, Mr. Ramon Alarcon, essentially
admitted when he noted that not every consumer product would be
relevant. (Hearing Tr ., at 422:15-423:16).
Ziip' s definition of a POSA as having at least two years' of
experience with devices like an electronic cigarette makes more sense as
this is the type of person would look to the prior art to find solutions to the
known problems. And , as the United States Supreme Court has held, it is
the solving of known problems that is a key determinant of obviousness.
Resp. Br . at 2-3.
The Staff argues:
JLI contends that for all asserted patents, a person of ordinary skill
in the art would have had (1) a B.S. in mechanical engineering, electrical
engineering, or an equivalent degree and (2) at least one year of
experience designing consumer products." CPreHBr. at 15. Ziip,
Eonsmoke and V4L did not present a contention in their respective pre-
hearing briefs regarding the level of ordinary skill in the art for any of the
asserted patents. Therefore, they waived any such contentions: See
Ground Rule 7.c. Nonetheless, Ziip and Eonsmoke' s expert, Mr. Flolid,
testified that he agreed with Ziip's apparent contention "that a person of
ordinary skill in the art would have at least (1) a B.S. degree in mechanical
engineering, electrical engineering, or an equivalent degree and/or (2) at
least two years of experience designing, developing, or testing electronic
cigarettes or related electromechanical devices, such as electromechanical
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PUBLIC VERSION
devices configured to heat liquid and generate an aerosol. This description
is approximate, and a higher level of training or skill might make up for
less education, and vice-versa." RX-0113 at Q19.
To the extent the ALJ does not agree that Respondents waived
their contentions as to one of ordinary skill in the art, the Staff agrees with
JLI' s contention, favoring the lesser experience requirement. The Staff,
however, is of the view that the difference between the private parties'
proposals with respect to the level of ordinary skill does not affect the
infringement or invalidity issues in this Investigation.
Staff Br. at 19-20 (citations omitted).
As an initial matter, Eonsmoke did not discuss the level of ordinary skill in the art
for any of the asserted patents in its pre-hearing brief. Therefore, it waived any such
contention. See Ground Rule 7.c.
In any event, JLI's proposed level of ordinary skill is more persuasive in the
context of the the ' 568 patent. JLl' s proposed level requires (1) a B.S. in mechanical
engineering, electrical engineering, or an equivalent degree, and (2) at least one year of
experience designing consumer products. Thus, the administrative law judge finds that a
person of ordinary skill in the art with respect to the ' 568 patent is a person who has a
B.S. in mechanical engineering, electrical engineering, or an equivalent degree, and at
least one to two years of experience designing consumer products.
2. Claim Construction
Below is a chart showing the parties' proposed claim constructions.
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Claim Claim(s) 	JLI's Construction Eonsmoke's 	Staff's
Term 	Construction 	Construction
"a body having a first
dimension between
opposing first and second
"a flattened sides that is smaller than
body" 1, 12, 20 	a second dimension 	abandoned 	SameasJLI
between opposing third
and fourth sides between
the first and second
sides"
"proximate 1, 12, 20 Plain meaning, which is: abandoned 	Same as JLI
to" 	"close or near"
"pair of "two corresponding,
1, 12,20 	relatively thin pieces of 	abandoned 	Same as JLI
plates" material used together"
"flat "smooth or even
contact 	1, 12, 20 "flat electrically abandoned electrically
tabs" conductive projections" 	conductive
projections"
"integrally 1, 12, 20 "made as a unitary abandoned 	Same as JLI
formed" 	structure"
Compl. Br. at 48-51; Resp. Br. at 3-4; Staff Br. at 37-42.
Eonsmoke did not present any claim construction analyses in its pre-hearing brief,
and thus waived any such contentions. See Ground Rule 7.c.
a. 	"a flattened body"
JLI argues and the Staff concurs that the claim term "a flattened body" should be
construed as "a body having a first dimension between opposing first and second sides
that is smaller than a second dimension between opposing third and fourth sides between
the first and second sides." The specification supports this construction. See JX-0001
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('568 Patent), claim 1, 54:40-44 ("a flattened body having a proximal body, a distal end
opposite the proximal end, a longitudinal axis between the proximal end and the distal
end, and a transverse axis that is perpendicular to and shorter than the longitudinal axis"),
id at 55:27-28, 56:24-25, FIGS. 5, 7A, 14 , 26A, 26B, 29A-29D. The Staff agrees with
JLI. See Staff Br. at 40.
The administrative law judge has determined that the claim term "a flattened
body" should be construed to mean "a body having a frrst dimension between opposing
first and second sides that is smaller than a second dimension between opposing third and
fourth sides between the frrst and second sides."
b. 	"proximate to"
JLI argues in its brief that the claim term "proximate to" has a plain meaning,
which is "at or near" but JLI' s chart shows the plain meaning JLI proposes is "close or
near." See Compl. Br. at 47-48. The Staff concurs that the claim term "proximate to"
has a plain meaning, which is "close or near." See Staff Br . at 41. The Staff believes "at
or near" was a typographical error. See Staff Br. at 41 n.10.
The specification uses this term consistently with this proposed plain meaning.
JX-0001 ('568 Patent), 15 :20-21 , 17:33-34, 36:48-49, 46:25-28, FIGS. 5, 7A-C, 8B, 9A-
9L, lOA, 11-15, 16B-C, 24A-B, 25A-B, 26A-B, 28A, 28C, 28D, 30, 31A-31L. This term
also appears in the' 130 patent, is used consistently in that context, and should be
construed consistently. The Staff agrees with JLI. See Staff Br. at 41.
The administrative law judge has determined that the claim term "proximate to"
should be given its plain and ordinary meaning, i.e., "close or near."
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c. "pair of plates"
JLI argues and the Staff concurs that the claim term "a pair of plates" in the
context of the ' 568 patent means "two corresponding, relatively thin pieces of material
used together." A plate, generally, is a relatively thin piece of material. The term " pair"
generally refers to two of something that are related (here "corresponding") in some way
(here "used together"). This construction is consistent with how the specification uses
this term, describing two corresponding plates that are used together to define a space.
See JX-0001 ('568 Patent), 14:64-15:3 ("thin plates affixed about the sides"), 16:64-65,
35:31-34, 54:50-51 , 55:38-39, 56:34-35, 56:44-46, FIGS. 7B, 8B, 24A-B, 25A-B, 26A,
28C-D. The related term "plate" appears in the ' 13 0 patent and should be construed
consistently with the construction of the word "plate" as it appears in the term "pair of
plates," recited in the '568 patent. The Staff agrees with JLI. See Staff Br. at 41.
The administrative law judge has determined that the claim term "pair of plates"
should be construed to mean "two corresponding, relatively thin pieces of material used
together."
d. "flat contact tabs"
JLI argues that the term "flat contact tabs" means "flat electrically conductive
projections." Contact tabs are electrically conductive projections that are placed on a
component so as to contact electrical conduits on another component, to complete a
circuit. Flat tabs look like projecting strips of metal or other conductive material. This
construction is consistent with the specification and the way a person of ordinary skill in
the art would understand the term. JX-0001 ('568 Patent), 48:6-9, 54:60-62 ("folded over
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PUBLIC VERSION
an outer surface"), 5.4:63 - 65 ("the pair of flat contact tabs configured to complete a
circuit"), 55 :48-51 , 55:51-56:3, 56:44-46, 56:46-50, FIGS. 24B, 26A, 28D.
The Staff argues that the "flat" portion of the term means "smooth or even,"
which is consistent with the specification. See Staff Br. at 42 (citing JX-1 , Figures 7B,
7C, 8B , and 9 and the specific disclosures in the specification associated with each
Figure; 48:4-9). Thus, the Staff agrees with the construction that contact tabs are
electrically conductive projections, but proposes that "flat" be construed as smooth or
even. JLI suggests that "flat" needs no construction, and Staff's construction does not
conform to the plain meaning of that word. A structure that is not flat could nonetheless
be smooth or even, like a ball bearing. Likewise, something flat, like a sheet of
sandpaper, may not be smooth or even.
The administrative law judge has determined that the claim term "flat contact
tabs" should be construed to mean "flat electrically conductive projections."
e. "integrally formed"
JLI argues and the Staff concurs that the claim term "integrally formed" means
"made as a unitary structure." This proposed meaning is consistent with the way the
specification uses this term. JX-0001 (' 568 Patent), 48:6-9, 54:60-62, 54:63-65, 55:48-
51 , 55:51-56:3, 56:44-46, 56:46-50, FIGS. 25A-B, 28C-D. The Staff agrees with JLI.
See Staff Br. at 42.
The administrative law judge has determined that the claim term "integrally
formed" should be construed to mean "made as a unitary structure."
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B. 	Infringement Analysis of the '568 Patent
JLI asserts claims 12, 17 and 20 of the '568 patent. JLI demonstrated by a
preponderance of the evidence that Eonsmoke's accused p~oducts infringe the asserted
claims of the ' 669 patent. See Compl. Br. at 51-65; CX-0015C (Collins WS) at Q/A 47-
278. Indeed, Eonsmoke did not contest infringement and did not present any non-
infringement arguments in its post-hearing briefs: See Joint Outline - Eonsmoke; Joint
Reply Outline - Eonsmoke.
Nonetheless, the administrative law judge adopts JLI's infringement analysis with
respect to Eonsmoke and provides the following infringement analysis of the '568 patent.
1. 	Importation and Accused Products
On August 5, 2019, the administrative law judge issued an initial determination
granting complainant's motion for summary determination with respect to importation.
See Order No. 35 (Aug. 5, 2019) at 4-5, aff'd in part, Commission Determination to
Review in Part an Initial Determination Granting in Part Complainant's Motion for
Summary Determination of Importation, Infringement, and Domestic Industry (Sept. 4,
2019) (Commission determining not to review importation).
Eonsmoke is based in Clifton, New Jersey, and is an importer, distributor, and
seller of ENDS devices and pods, including the Eonsmoke devices and pods
manufactured by Ziip. The accused products with respect to Eonsmoke include the
Eonsmoke device, the Eonsmoke v2.0 device, Eonsmoke (Eon) pod, and the 4X pod
(individually and collectively, "Eonsmoke accused products"). See Compl. Br. at 10
(citing CX-0958C (Eonsmoke Invoices 13); CX-0858 (Eonsmoke's Supp. Responses to
JLI's RF As)).
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JLI provided the following table showing the Eonsmoke accused products that are
alleged to infringe the asserted patent claims:
'' 	, ..
Accused Product 	'669 	'915 	'568 	'130
Eonsmoke Resnondent 	1, 2, 13 	1, 6, 21 	12, 17, 	1, 2, 4
Eonsmoke device 20
Eonsmoke v2 device (stipulated
representative) .
Eonsmoke pods (stipulated representative)
4Xpods
Compl. Br. at 220.
Eonsmoke's stipulations concerning representativeness discussed above for the
'669 patent apply equally to the'568 patent. See CX-0015C (Collins WS) Q/A 69-71.
a. 	Independent Claim 12
Asserted claim 12 is recited below:
12. A cartridge for use with a vaporization device, the cartridge
comprising:
[a] a flattened body having a proximal end, a distal end
opposite the proximal end, a longitudinal axis between the
proximal end and the distal end, and a transverse axis that is
perpendicular to and shorter than the longitudinal axis;
[b] a reservoir within the flattened body and holding a
vaporizable material;
[c] a mouthpiece proximate to the proximal end of the flattened
body;
[d] a heater comprising:
a pair of plates extending in a direction of the longitudinal
axis,
[e] a wick extending along at least the transverse axis, at
least a first portion of the wick disposed between the pair of
plates, and at least a second portion of the wick disposed
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PUBLIC VERSION
within the reservoir and in contact with the vaporizable
material, and
[f] a resistive heating element directly in contact with each
plate of the pair of plates and in thermal contact with the
wick; and
[g] a pair of flat contact tabs integrally formed from the pair of
plates and folded over an outer surface of the flattened body
proximate to the distal end of the flattened body, the pair of flat
contact tabs extending from the heater and configured to
complete a circuit with the vaporization device when the distal
end is inserted into the vaporization device.
JX-0001 (' 568 Patent), claim 12.
Claim 12[p)
Eonsmoke pods practice claim element 12[p] because the pod is a "cartridge for
use with a vaporization device." See CX-0015C (Collins WS) Q/A 113 (Eonsmoke).
Claim 12[a)
Eonsmoke pods practice claim element 12[a] because the pods include a
"flattened body having a proximal end, a distal end opposite the proximal end, a
longitudinal axis between the proximal end and the distal end, and a transverse axis that
is perpendicular to and shorter than the longitudinal axis." See CX-0015C (Collins WS)
Q/A 119 (Eonsmoke). Eonsmoke pods have a flattened body. The cartridge' s flattened
body is rectangular and has a first dimension between opposing first and second sides that
is smaller than a second dimension between opposing third and fourth sides .
•
Accordingly, Eonsmoke pods meet this limitation. See CX-0015C (Collins WS) Q/A 120
(Eonsmoke).
Claim 12[b)
Eonsmoke pods practice claim element 12[b] because the pods include "a
reservoir within the flattened body, the reservoir configured to hold a vaporizable
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PUBLIC VERSION
material." See CX-0015C (Collins WS) QIA 129 (Eonsmoke); CX-1183 (Eonsmokev2
Photo Set 6); CX-1275C (Eonsmokev2 Photo Set 5); CX-1192 (Eonsmokev2 Photo Set
2). Photos of each of these pod's packaging identifies nicotine as an ingredient, and
language copied from Eonsmoke's website describes the pods as containing liquid
materials for vaping including nicotine. See CX-0015C (Collins WS) QIA 130
(Eonsmoke). Based on the information provided on the cartridges' respective packaging
and websites selling the cartridges, the liquid in the Eonsmoke pods is a vaporizable
material. See id at QIA 131 (Eonsmoke).
Claim 12[c)
Eonsmoke pods practice claim element 12[c] because the pods include "a
mouthpiece proximate to the proximal end of the flattened body." See CX-0015C
(Collins WS) QIA 140 (Eonsmoke). A first plate is positioned proximate to (i.e., close or
near) a first side of the storage compartment, the first plate coupled to the heating element
and attached proximate to the first end. A second plate is positioned proximate to (i.e.,
close or near) a second side of the storage compartment, the second plate coupled to the
heating element and attached proximate to the first end. See CX-0015C (Collins WS)
QIA 141 (Eonsmoke ).
Claim 12[d)
Eonsmoke pods practice claim element 12[d] because the pods include "a heater
comprising: a pair of plates extending in a direction of the longitudinal axis." See CX- ·
0015C (Collins WS) QIA 150 (Eonsmoke). Eonsmoke pods have a pair of plates. The
cartridge's plates are two corresponding relatively thin pieces of material that are used
together to provide power to the coil. These two plates are also smooth, generally flat,
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PUBLIC VERSION
thin pieces of metal that are parallel and face each other. See CX-0015C (Collins WS)
QIA 151 (Eonsmoke).
Claim 12[e)
Eonsmoke pods practice claim element 12[e] because the pods include "a wick
extending along at least the transverse axis, at least a first portion of the wick disposed
between the pair of plates, and at least a second portion of the wick disposed within the
reservoir and in contact with the vaporizable material," when the vaporizable material is
present. See CX-0015C (Collins WS) Q/A 159 (Eonsmoke).
Claim 12[0
Eonsmoke pods practice claim element 12[f] because the pods include "a resistive
heating element directly in contact with each plate of the pair of plates and in thermal
contact with the wick." See CX-0015C (Collins WS) Q/A 164 (Eonsmoke). Each pod
has a resistive heating element in contact with the pair of plates, and in thermal contact
with the wick. See CX-0015C (Collins WS) Q/A 164 (Eonsmoke). The wick is
positioned at least partially in an area occupied by the vaporizable material when the
vaporizable material is present. Thus, at least a portion of the wick will contact the
vaporizable material at that time. See CX-0015C (Collins WS) Q/A 164 (Eonsmoke).
Claim 12[g)
Eonsmoke pods practice claim element 12[g] because each pod includes "a pair of
flat contact tabs integrally formed from the pair of plates and folded over an outer surface
of the flattened body proximate to the distal end of the flattened body, the pair of flat
contact tabs extending from the heater and configured to complete a circuit with the
vaporization device when the distal end is inserted into the vaporization device." See
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PUBLIC VERSION
CX-0015C (Collins WS) QIA 173 (Eonsmoke). The tabs and the plate form a unitary
structure. The contact tabs are made of metal and, thus, electrically conductive. The
contact tabs project from the pair of the plates and extend outside the body, and are
folded over an outer surface of the flattened body proximate to the distal end. See id. at
QIA 17 4 (Eonsmoke). When folded, the contact tabs are level, and are configured to
complete a circuit with the vaporization device when the distal end is inserted into the
vaporization device. See i d.
Eonsmoke pods include "flat contact tabs." The contact tabs are made of metal
and, thus, electrically conductive. Once folded, the contact tabs can electrically couple to
corresponding electrical contacts of the vaporization device. See CX-0015 C (Collins
WS) QIA 175 (Eonsmoke).
These flat contact tabs are "integrally formed." As discussed above, the contact
tabs are made as a unitary structure from a single piece of metal. Therefore, the pods
meet this limitation. See CX-0015C (Collins WS) QIA 176 (Eonsmoke).
To the extent that any differences may exist between the accused pods and the
features recited in claim 12 , these differences are insubstantial. The pods include a pair
of flat contact tabs that are intended to perform substantially the same function, in
substantially the same way, to achieve substantially the same result, for example ''to
complete a circuit with the vaporization device when the distal end is inserted into the
vaporization device," as recited in the above limitation of claim 12. Thus, this limitation
is also met under the doctrine of equivalents. See id. at QIA 177 (Eonsmoke ).
79

Pair of flat contact ta bs inte grally
fanned from th e pla tes
PUBLIC VERSION
Co nta t tabs fo ld ed ove r an outer surface of
the fl attened body proximate to the distal end
CX-1183.0029-.0032 (Eonsmokev2 Photo Set 6) (annotated).
As shown on CX-1183 (Eonsmokev2 Photo Set 6), outlined above in blue are the
pair of flat contacted tabs integrally formed from the plates, to form a unitary structure.
The tabs are flat and smooth. See CX-0015C (Collins WS) Q/A 174. This document also
shows the contact tabs projecting from the pair of plates and extend outside the body, and
folded over an outer surface of the flattened body proximate to the distal end. See id As
shown, when folded, the contact tabs are level, and are configured to complete a circuit
with the vaporization device when the distal end is inserted into the vaporization device.
See CX-1275C.0034-.0037 (Eonsmokev2 Photo Set 5). CX-1192 (Eonsmokev2 Photo
Set 2) and CX-1275C (Eonsmokev2 Photo Set 5) similarly show the Eonsmoke cartridge
includes "flat contact tabs." See CX-0015C (Collins WS) Q/A 187.
The accused products therefore meet every limitation described in claim 12 of the
' 568 patent. See id at Q/A 207.
b. 	Dependent Claim 17
Eonsmoke pods practice claim 17 because these pods meet the limitation
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PUBLIC VERSION
"wherein the mouthpiece is coupled to the flattened body with a snap-fit coupling." See
CX-0015C (Collins WS) QIA 220 (Eonsmoke). Each pod includes a mouthpiece that
couples to the flattened body. The mouthpiece couples to the flattened body via a snap-
fit coupling between protrusions on the lateral sides of the flattened body and openings
on the lateral sides of the mouthpiece. See id. at QIA 221 (Eonsmoke ).
To secure the mouthpiece to the flattened body, the mouthpiece is inserted over
the proximal end of the flattened body, and pressed downwards towards the distal end.
See id. at QIA 222 (Eonsmoke ). As the mouthpiece slides over the protrusions, the
protrusions initially deflect the mouthpiece, causing the mouthpiece to flex outwards over
the protrusions. See id. 	When the protrusions align with the mouthpiece openings, the
deflected mouthpiece elastically returns, or snaps back, to its original position, and the
protrusions engage with the mouthpiece, thereby effecting the snap-fit coupling. The
engagement between the flattened body protrusions and the mouthpiece openings secures
the mouthpiece to the flattened body. See id.
To the extent that any differences may exist between the accused pods and the
features disclosed in claim 17 of the ' 568 patent, a person of ordinary skill would have
understood. these differences to be insubstantial. See CX-0015C (Collins WS) QIA 223
(Eonsmoke). The pod mouthpiece attaches to the storage compartment with a snap-fit
coupling-in other words, performs substantially the same function, in substantially the
same way, to achieve substantially the same result- 	to secure the mouthpiece to the
flattened body as in claim 17. Thus, this claim is also met under the doctrine of
equivalents. See id. at QIA 245.
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c. 	Independent Claim 20
Asserted claim 20 is recited below:
20. An apparatus comprising:
a vaporizer body comprising:
a power source;
a cartridge receptacle; and
a pair of contacts within the cartridge receptacle; and
[a] a cartridge comprising:
a flattened body having a proximal end, a distal end
opposite the proximal end, a longitudinal axis between the
proximal end and the distal end, and a transverse axis that
is perpendicular to and shorter than the longitudinal axis;
[b] a mouthpiece proximate to the proximal end of the
flattened body;
[c] a reservoir within the flattened body, the reservoir
configured to hold a vaporizable material;
[d] a pair of plates extending in a direction of the
longitudinal axis;
[e] a wick extending along at least the transverse axis, at
least a first portion of the wick disposed between the pair of
plates;
[f] a resistive heating element in contact with the pair of
plates and the wick, wherein at least a second portion of the
wick is configured to contact the vaporizable material when
the vaporizable material is present; and
[g] a pair of flat contact tabs integrally formed from the
pair of plates and folded over an outer surface of the
flattened body proximate to the distal end of the flattened
body, the pair of flat contact tabs configured to complete a
circuit with the pair of contacts and the power source when
the distal end is inserted into the cartridge receptacle.
JX-0001 ('568 Patent), claim 20.
Claim 20[pl
Eonsmokev2.0 devices practice claim element 20[p] because these devices are an
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PUBLIC VERSION
apparatus having a "vaporizer body comprising a power source; a cartridge receptacle;
and a pair of contacts within the cartridge receptacle." See CX-0015C (Collins WS) Q/A
246-247. Each device is an apparatus with a cartridge receptacle, vaporizer body, pair of
electrical contacts within the cartridge receptacle, and a power source within the
vaporizer body. See id.
Claims 20(a]-[gl
Each of claim elements 20[a] through 20[g], for purposes of analyzing
infringement, is materially identical to claim elements 12[a] through 12[g], respectively.
For these reasons, and as supported by the evidence of record, Eonsmoke pods practice
claim elements 20[a] through 20[g]. See CX-0015C (Collins WS) Q/A 250-277. The
representative Eonsmoke device together with the representative Eonsmoke pod include
every feature of claim 20. See id. at Q/A 278.
The evidence shows that Eonsmoke knows that the Eonsmoke Pod and 4X pod
are inoperative without an infringing device, and are a material part of the cartridge plus
device embodiment disclosed in claim 20 of the ' 568 patent, i.e., the pods are not staple
articles of commerce suitable for substantial non-infringing use. See CX-0018C
(Tolmach Dep. Designations (Apr. 4, 2019)) 81-83, 184-186; CX-0407 (Eonsmoke v2.0
JUUL Compatible Screenshot); CX-1302C (Eonsmoke Pods Ad); CX-1304C (4X Pods
Blue Blackberry Packaging).
Despite having notice of the ' 568 patent and the allegations of infringement,
Eonsmoke nonetheless encourages and facilitates end users to practice claim 20 of the
' 568 patent by distributing instructions for, and supporting the use of the pods with an
infringing device. See CX-1111 (Eonsmoke Instructions Screenshot); CX-1112
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I

PUBLIC VERSION
(Eonsmoke Packaging Photo); CX-0217 (Eonsmoke Product & Packaging Images 4);
CX-0218 (Eonsmoke Packaging Images); CX-0353 (4X Packaging & Pods Images).
Moreover, the Eonsmoke pods and devices, Eonsmoke v2.0 devices, and the 4X pods, are
expressly marketed as "JUUL Compatible" or "JUUL Pods Compatible." See CX-1302C
(Eonsmoke Pods Ad).
Eonsmoke pods are used by customers pursuant to the cartridges' packaging
instructions in a manner that infringes claim 20 of the ' 568 patent. See CX-0015C
(Collins WS) Q/A 77, 91 ; CX-0018C (Tolmach Dep. Designations (Apr. 4, 2019)), 58-
60; CX-0026C (Grishayev Dep. Designations (Apr. 17, 2019)) 55-57.
Eonsmoke indirectly infringed and continue to indirectly infringe at least claim 20
of the ' 568 patent, by way of contributory infringement, by selling after importation the
Eonsmoke Pods and the 4X pods in the United States, and encouraging and facilitating
manufacturers, distributors, retailers, and end users to perform actions using those
devices and pods in a manner that Eonsmoke knows will infringe and with the intent that
performance of the actions will infringe. See CX-0015C (Collins WS) Q/A 78
(Eonsmoke ).
JLI's expert, Dr. Collins, conducted a vis_ual inspection and ex am ination of the
Eonsmoke pods, the individual components therein, and its packaging. He also
considered the extensive other record evidence, including information available on
webpages dedicated to the Eonsmoke pods, and testimony of various deponents relating
to the Eonsmoke pods and Eonsmoke devices. This evidence is shown on CX-1302C
(Eonsmoke Pods Ad); CX-1304C (4X Pods Blue Blackberry Packaging); CX-1302C
(Eonsmoke Pods Ad); CX-0407.0001 (Eonsmoke v2.0 Juul Compatible Screenshot); CX -
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PUBLIC VERSION
0018C (Tolmach Dep. Designations (Apr. 4, 2019)) 81-82, 184-186; CX-1111
(Eonsmoke Instructions Screenshot); CX-1112 (Eonsmoke Packaging Photo); CX-0170
(Eonsmoke Product & Packaging Images 3); CX-0026C (Grishayev Dep. Designations
(Apr. 17 , 2019)) 55-57; CX-0018C (Tolmach Dep. Designations (Apr. 4, 2019)) 58-60.
C. 	Validity of the '568 Patent
Respondent Eonsmoke argues that (1) Buchberger (RX-0107) alone renders
obvious claims 12 , 17 and 20 of the ' 568 patent; and (2) Buchberger (RX-0107) in
combination with Qiu (RX-0108) renders obvious claims 12 , 17 and 20 of the ' 568
patent. See Resp. Br. at 14-40. Eonsmoke argues and JLI and the Staff do not dispute
that prior art alleged by Eonsmoke are prior to the priority date of the ' 568 patent. See id.
at 4.
For the reasons set forth below, Eonsmoke has not shown by clear and convincing
evidence that asserted claims 12 , 17 and 20 of the ' 568 patent are invalid.
1. 	Buchberger (RX-0107) Alone
Respondent Eonsmoke argues that ( 1) Buchberger (RX-0107) alone renders
obvious claims 12 , 17 and 20 of the ' 568 patent. See Resp. Br . at 14-26.
Independent Claim 12
Eonsmoke argues, inter a/ia:
Juul does not dispute that Buchberger discloses the following
features of claim 12:
• 	A cartridge for use with a vaporization device, the cartridge
compnsmg:
• 	a flattened body having a proximal end, a distal end
opposite the proximal end, a longitudinal axis between the
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PUBLIC VERSION
proximal end and the distal end, and a transverse axis that
is perpendicular to and shorter than the longitudinal axis;
• 	a reservoir within the flattened body and holding a
vaporizable material;
• 	a mouthpiece proximate to the proximal end of the
flattened body;
• 	a heater comprising:
• 	a pair of plates extending in a direction of the longitudinal
axis
• 	a resistive heating element directly in contact with each
plate of the pair of plates and in thermal contact with the
wick.
(CX-1352C.0048 and CDX-0006C.64). Complainant also does not dispute
that Buchberger discloses contact tabs. The dispute as to the invalidity of
claim is therefore whether Buchberger discloses a wick as claimed and
whether it would have been obvious to modify Buchberger' s tabs to be
folded. As set forth below, Mr . Flolid correctly testified that Buchberger
does disclose a wick as claimed and it would have been obvious to modify
Buchberger' s tabs to be folded in view of known integrated circuit
principles.
Resp. Br. at 14-15.
Buchberger alone does not render obvious claim 12 for at least two reasons. See
CX-1352C (Collins Rebuttal WS) Q/A 10. First, Buchberger does not disclose or suggest
claim element 12[g]. Second, Buchberger does not disclose or suggest claim element
12[i]. See CX-1352C (Collins Rebuttal WS) Q/A 170-171 , 182.
Asserted claim 12 is recited below:
12. A cartridge for use with a vaporization device, the cartridge
comprising:
a flattened body having a proximal end, a distal end opposite
the proximal end, a longitudinal axis between the proximal end
and the distal end, and a transverse axis that is perpendicular to
and shorter than the longitudinal axis;
a reservoir within the flattened body and holding a vaporizable
material;
a mouthpiece proximate to the proximal end of the flattened
body;
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[e] a heater comprising:
[f] a pair of plates extending in a direction of the
longitudinal axis,
[g] a wick extending along at least the transverse axis, at
least a first portion of the wick disposed between the pair of
plates, and at least a second portion of the wick disposed
within the reservoir and in contact with the vaporizable
material, and
[h] a resistive heating element directly in contact with each
plate of the pair of plates and in thermal contact with the
wick; and
[i] a pair of flat contact tabs integrally formed from the pair of
plates and folded over an outer surface of the flattened body
proximate to the distal end of the flattened body, the pair of flat
contact tabs extending from the heater and configured to
complete a circuit with the vaporization device when the distal
end is inserted into the vaporization device.
JX-0001 (' 568 Patent), claim 12. 18
Claim 12[g)
Mr. Flolid opines that Buchberger' s planar composite 22 corresponds to the wick
recited in limitation 12[g], and then cites to two different embodiments (the embodiment
disclosed in Figure 9 and the embodiment disclosed in Figures 26-28) for allegedly
disclosing that a portion of planar composite 22 is disposed within a reservoir. See RX-
0113 (Flo lid WS) QIA 73. Yet, neither embodiment disclose that a portion of composite
22 is disposed within a reservoir.
Regarding the first embodiment, Mr . Flolid opines that Buchberger' s reservoir 45
corresponds to the claimed reservoir, and that Buchberger's plate-like contacts 23
18 JLI has given a letter designation for each element of the asserted independent claims.
The letter designations used for the elements of this claim is different for infringement
and validity analysis. The administrative law judge is adopting the different letter
designations as appropriate.
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PUBLIC VERSION
correspond to the claimed pair of plates. See CX-1352C (Collins Rebuttal WS) Q/A 172-
173. As shown in Figures 18 and 20~ planar composite 22 is not disposed within
reservoir 45. See id at Q/A 177, 180.
49 	18 	49
4
45 _
43
52
22
41
Plana r
composite 22 	23
8 --..t::,----.....-t
- Extension 44
47 Reservoir 45
44
42
55
56
54
3
Buchberger,
FIG. 20 ,
Annotated
RX-0107 (Buchberger), FIG. 20 (annotated).
Indeed, Mr. Flolid admitted that as shown in Figure 20, planar composite 22 is not within
reservoir 45. Flolid Tr. 223-224. As shown above in RX-0107 (Buchberger), the liquid
material 16 in reseryoir 45 (in green) is channeled out to the planar composite 22 via the
extension 44, which is formed by two plates. CX-1352C (Collins Rebuttal WS) Q/A 179;
RX-0107 (Buchberger),, [0139], FIGS. 18, 20. Planar composite 22 is not disposed
within reservoir 45. Thus, the first embodiment of Buchberger does not disclose at least
a second portion of the wick is disposed within a reservoir, as claimed.
Regarding the second embodiment in Figures 26-28, Mr. Flolid opines that
component 84 is a reservoir. See RX-0113 (Flolid WS) Q/A 73; Flolid Tr. 231. Yet,
component 84 is "an open-pored foam," which is not a reservoir. See CX-1352C (Collins
Rebuttal WS) Q/A 174; RX-0107 (Buchberger), [0147]. Indeed, a person of ordinary
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PUBLIC VERSION
skill in the art would have understood that, if anything, reservoir 45 corresponds to the
reservoir recited in claim limitation 12[g], not "reservoir 84" referenced by Mr. Flolid.
See CX-1352C (Collins Rebuttal WS) Q/A 176-178. Even if foam 84 is considered a
reservoir, as shown in Fig. 28, planar composite 22 is sandwiched between foam 84 and
plate 23- planar composite 22 is not within foam 84. Thus, the second embodiment of
Buchberger does not disclose at least a second portion of the wick is disposed within a
reservoir, as claimed. Thus, Buchberger does not disclose claim limitation 12[g]. See
CX-1352C (Collins Rebuttal WS) Q/A 180.
Claim 12[i)
Buchberger does not disclose or suggest limitation 12[i]. Mr. Flolid opines that
Buchberger' s plug contacts 93 correspond to the claimed pair of flat contact tabs,
inhalator component 2 corresponds to the claimed cartridge, and inhalator part 1
corresponds to the claimed vaporization device. See RX-0113 (Flolid WS) Q/A 75. He
opines that modifying Buchberger' s plug contacts 93 to fold over the outer surface would
have been obvious to a person of ordinary skill in the art in view of general integrated
circuit packaging concepts. See CX-1352C (Collins Rebuttal WS) Q/A 182-183. The
illustrations he uses to support his opinion, however, are not from any identified source.
Additionally, combining integrated circuit concepts with Buchberger constitutes a
separate 35 U.S.C. § 103 ground, for which Eonsmoke provides no analysis, motivation
to combine, expectation of success, or other support.
Mr. Flolid admits that Buchberger does not explicitly disclose a pair of flat
contact tabs that are folded over an outer surface, as required by the claim limitation. See
Flolid Tr. 225-226. Instead, Mr. Flolid opines that modifying Buchberger' s plug contacts
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PUBLIC VERSION
93 to fold over an outer surface would have been obvious to a person of ordinary skill in
the art, "as this was a known way of fonning electrical connections in integrated
circuitry." See RX-0113 (Flolid WS) Q/A 75; CX-1352C (Collins Rebuttal WS) Q/A
184. This is improper hindsight.
* 	* 	*
Additionally, the proposed modification is not obvious because: (1) the cited
integrated circuit packaging concept is non-analogous art to the electrical connections in
an ENDS device; (2) the cited art itself provides no reason to modify Buchberger in the
proposed manner, and explicitly provides reasons not to do so; and (3) the proposed
combination does not meet the claim limitation, even if implemented. Id. at Q/A 189.
Non-analogous Art
Art is analogous where either (a) the art is from the same field of endeavor as the
claimed invention, or (b) even if the art is not within the same field of endeavor, the art is
still reasonably pertinent to the particular problem with which the inventor is involved.
In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); In re Oetiker, 877 F.2d 1143,-1447
(Fed. Cir. 1992); CX-1352C (Collins Rebuttal WS) Q/A 190. The field of the claimed
invention is "electronic inhalable aerosol devices including vaporization devices and
cartridges configured for use with vaporization devices." See JX-0001 ('568 Patent),
1:36-40, 1:64-67, 2:1-4, 20:25-40. The claims are directed to this same field, "[a]
cartridge for use with a vaporization device." The contacts are used to convey enough
power to the heater to vaporize the liquid. See CX-1352C (Collins Rebuttal WS) Q/A
191.
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PUBLIC VERSION
For a reference to be "reasonably pertinent" to the problem with which the
inventors are involved, it must logically have commended itself to the inventor' s
attention in considering his problem. In re Jeon Health and Fitness, Inc., 496 F.3d 1374,
1379-80 (Fed. Cir. 2007); CX-1352C (Collins Rebuttal WS) Q/A 193. Integrated circuit
packaging is unrelated to electronic inhalable aerosol devices. It has different problems,
solutions, manufacturing processes, and other considerations compared with inhalable
aerosol devices. See CX-1352C (Collins Rebuttal WS) Q/A 192. The ' 568 patent does
not contemplate integrated circuitry packaging concepts, such as those cited by Mr.
Flolid. It does not address techniques used to mount integrated circuits within the
inhalable aerosol devices. Id
On cross-examination, JLI's expert Dr. Collins explained why integrated circuits
are not analogous art, and also why one of skill in the art would not combine an
integrated circuit with Buchberger to arrive at the folded-over contact tabs of the asserted
claims:
So what do integrated circuits do? They are used for control of devices.
And what is the electrical connection [in the claims]? It is for power
conduction. So, no, integrated circuits do not convey meaningful power.
As a matter of fact, they are supposed to use as little power as possible. So
they conduct voltage signals as opposed to current, very different
applications. As an engineer, I wouldn't look to something that is only
meant to convey a voltage to something that [] I need to convey significant
power. That is one issue. The other issue is, you know, why are the tabs on
the integrated circuits bent? Well, they are bent so that the tabs come out
the side of the chip, and then they are bent down. And that allows you to
axially insert an integrated circuit into a slot or a position where it can be
surface-mounted. Well, in[] Buchberger [the tabs] are already pointing
down, so there is no reason to bend them[. They already] work perfectly
well being inserted into the device.
Collins Tr. 483-484.
91
•

PUBLIC VERSION
Dr. Collins also distinguished Buchberger and integrated circuits from the
folded-over contact tabs recited in the asserted claims based on the role of the tabs
in the overall integrated product:
[W]hat are ]the folded-over contact] tabs doing? Again, multiple
functions. So they are integrally connected to the plates, and they allow
obviously electrical contact going from the battery into, through the plate
to the heater .... But at the same time they are playing a significant role in
the thermal management that they are dissipating heat [] that
accumulate[s] into the plate down to the plates and away from the wick.
So they are actively involved in thermal management. And also from a
whole assembly perspective, that those plates are inserted and then those
tabs are bent over, mechanically holding the heater assembly in place. So
those are ... all things that those tabs[] are doing.
Collins Tr. 481-482; see also id. at 477.
One of skill in the art therefore cannot merely pick and choose random
components and attributes from disparate arts and combine them into an ENDS device
without initiating a cascade of problems needing multifaceted solutions.
The Background section of the '568 patent describes that "the use of a cartridge at
the proximal end of the device, which is also held by the user's mouth, particularly where
the cartridge is held in the vaporizer device by a friction- or a snap-fit, may result in
instability in the electrical contacts." JX-0001 ('568 Patent), 1:53-57. Another problem
addressed is "[c]ontrol of the temperature of the resistive heater ... based on the resistance
of the resistive heating element." Id. at 1:40-43. Other problems addressed include
cartridges "specifically adapted to be releasably but securely held within the cartridge-
receiving opening of the vaporizer and resist disruption of the electrical contact with the
controller and power supply in the vaporizer even when held by the user's mouth." Id. at
2:4-9. All of these problems are directed to delivering inhalable aerosol to a user in a
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PUBLIC VERSION
reliable and consistent manner. See CX-1352C (Collins Rebuttal WS) QIA 195.
The integrated circuit concept cited by Mr. Flolid is not reasonably pertinent to
this problem. Rather, this concept lends itself to problems related to the packaging and
mounting of integrated circuits, which are much different than the problems faced by the
inventors of the ' 568 patent. Integrated circuits are not intended to be repeatedly
connected and disconnected for replacement. Rather, integrated circuits are designed to
be permanently connected to a printed circuit board. They are not intended to be replaced
by consumers. See id. at QIA 196.
To the extent that the '568 patent discloses integrated circuits, it is not to address
problems relating to the packaging or mounting of the integrated circuits. Rather, the
'568 patent discloses integrated circuits for controlling functionality of the electronic
inhalable aerosol devices. See id. at QIA 197. A person of ordinary skill in the art would
not have looked to integrated circuit packaging concepts to solve the problems relating to
electrical coupling of vaporization devices and corresponding cartridges. See id. at QIA
198.
Reasons to Modify Buchberger
Even if the integrated circuitry art cited by Eonsmoke was analogous art, a person
of ordinary skill in the art would not have modified Buchberger' s plug contacts 93 as
proposed by Mr. Flolid. There was no reason why a person of ordinary skill would have
folded Buchberger's plug contacts 93. Mr. Flolid did not provide any reason for
modifying Buchberger in view of the identified integrated circuit packaging concepts.
See RX-0113 (Flolid WS) QIA 7 5. He also did not describe how a person of ordinary
skill would have implemented the modifications in Buchberger's inhalator component 2,
93

PUBLIC VERSION
or explain how the identified integrated circuitry concept would be implemented in
Buchberger to modify plug contacts 93. As such, Mr. Flolid' s opinion uses improper
hindsight to reconstruct the claim from the blueprint provided by the inventors. A person
of ordinary skill would not have modified Buchberger in the manner alleged. See CX-
1352C (Collins Rebuttal WS) QIA 188.
The cited references do not provide any reason to, and, in fact, provide reasons
not to modify plug contacts 93 to fold over an outer surface of inhalator component 2. Id.
at QIA 199. The cited integrated circuitry shows integrated circuit pins or leads that are
mechanically coupled to lateral sides of the integrated circuit housing and bent at a
substantially right angle. See RX-0113 (Flolid WS) QIA 75. The mere existence of
integrated circuit pins bent at a right angle would not suggest to a person of ordinary skill
to modify Buchberger' s plug contacts 93 to fold over the outer surface. See RX-0107
(Buchberger), FIGS. 2, 6, 8. Doing so would have removed the secure mechanical
connection between the plug contacts 93 and the spring contacts 94, thus lessening the
mechanical stability of the inhalator device. See CX-1352C (Collins Rebuttal WS) QIA
200.
The circuit in Buchberger is completed between component 2 and inhalator part 1
when plug contacts 93 and spring contact 94 are coupled. Plug contacts 93 are
specifically configured to insert into spring contacts 94 to secure the connection between
component 2 and inhalator part 1. See id. at QIA 201. Therefore, in addition to
providing the mechanism necessary to complete the circuit between component 2 and
inhalator part 1, the configuration of plug contacts 93 also adds a further mechanical
connection that helps to secure the inhalator device. A person of ordinary skill would
94

PUBLIC VERSION
have recognized the mechanical, structural, and dimensional differences ofBuchberger ' s
inhalator component 2 and inhalator part 1, and would not have sought to modify
Buchberger using these integrated circuit packaging concepts. See id. ; RX-0107
(Buchberger), FIG. 6 (annotated above).
Furthermore, folding the plug contacts 93 over the outer surface of the inhalator
component 2 would render the inhalator device inoperable. See RX-0107 (Buchberger),
FIG. 6 (excerpt) (annotated above). It would misalign plug contacts 93 relative to spring
contacts 94 such that plug contacts 93 would no longer be able to couple with spring
contacts 94 to complete the circuit between the inhalator component 2 and the inhalator
part 1. A person of ordinary skill would have realized this, and thus would not modify
the plug contacts 93 to fold over the outer surface. See CX-1352C (Collins Rebuttal WS)
Q/A 202-204.
The Proposed Combination
Finally, inasmuch as modifying plug contacts 93 to fold over the outer surface
would have prevented the coupling of plug contacts 93 and spring contacts 94, and thus
would have prevented the completion of the circuit, the proposed modification would not
meet limitation 12[i], which requires that "the pair of flat contact tabs [are] configured to
complete a circuit with the vaporization device when the distal end is inserted .. .. " See id.
at Q/A 205.
Buchberger, with or without Mr. Flolid' s proposed modification, does not
disclose "the pair of flat contact tabs configured to complete a circuit with the
vaporization device when the distal end is inserted into the vaporization device" because
the distal end of Buchberger' s inhalator component 2 is not "inserted into" Buchberger' s
95

PUBLIC VERSION
inhalator part 1, as required by claim limitation 12[i]. Id. at Q/A 206. Mr. Flolid points
to Buchberger' s inhalator component 2 as corresponding to the claimed cartridge, and its
inhalator part 1 as corresponding to the claimed vaporization device. See RX-0113
(Flolid WS) Q/A 75 ; RX-0107 (Buchberger), FIGS. 2, 8 (annotated above), 6 (excerpt)
(annotated above). Inhalator component 2 is configured to engage with inhalator part 1
by fitting onto and over inhalator part 1, not by inserting into inhalator part 1. See CX-
1352C (Collins Rebuttal WS) Q/A 207.
Buchberger' s disclosure that plug contacts 93 of inhalator component 2 are
inserted into spring contacts 94 of inhalator part 1 does not support Mr. Flolid' s opinion
for two reasons. See CX-1352C (Collins Rebuttal WS) Q/A 208. First, Mr. F1olid' s
proposed modification of folding plug contacts 93 over the outer surface of inhalator
component 2 would prevent plug contacts 93 from being inserted into spring contacts 94.
Id. at Q/A 209. Second, even if Mr. Flolid' s proposed modification would allow for the
insertion of the plug contact 93 into the spring contact 94, the proposed modification
would still not meet the claim limitation. See RX-0107 (Buchberger), FIG. 6 (excerpt)
(annotated above). A person of ordinary skill in the art would have understood that the
insertion of plug contacts 93 into spring contacts 94 does not constitute an insertion of the
distal end of inhalator component 2 into inhalator part 1, inasmuch as the plate-like
contacts 23 protrude out of the outer surface of the housing 3 of inhalator component 2.
See RX-0107 (Buchberger), ,r [0148] ; CX-1352C (Collins Rebuttal WS) Q/A 210-212;
RX-0107 (Buchberger), FIG. 6 (excerpt) (annotated above). Buchberger therefore does
not render obvious claim 12 of the ' 568 patent.
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PUBLIC VERSION
Dependent Claim 17
Eonsmoke argues:
Buchberger does not expressly disclose the mouthpiece being
coupled to the flattened body by a snap-fit coupling. However, snap-fit
couplings were notoriously well known and it would have been obvious to
modify Buchberger to include such a coupling. (RX-0113.0031).
As examples, Buchberger teaches snap-in hooks 8 and latching
lugs 9, which provide a "snap connection" while still permitting selective
detachment. Tucker also acknowledges that a snap-fit is a known coupling
technique, such as at paragraph 0089. (RX-0109.0017, para. 0089).
Accordingly, a POSA would have been aware of these very basic
mechanical principles and would have found it obvious to modify
Buchberger to include the claimed snap-fit arrangement. (RX-0113 .0031 ,
Q/A 77).
Further, as Mr. Flolid testified, snap-fits can provide a separable or ·
non-separable connection. (Hearing Tr., 316:13-18).
Resp. Br. at 20-21.
Asserted claim 17 is recited below:
17. The cartridge of claim 12, wherein the mouthpiece is coupled
to the flattened body with a snap-fit coupling.
JX-0001 ('568 Patent), claim 17.
Mr. Flolid admits that Buchberger does not expressly disclose that its mouthpiece
is coupled to inhalator component 2 by a snap-fit coupling, as required by claim 17. See
RX-0113 (Flolid WS) Q/A 77. Mr. Flolid opines that it would have been obvious to
modify Buchberger to implement the snap-fit coupling because "snap-fit couplings are
notoriously well known." Id. Mr. Flolid opines that Buchberger "teaches snap-in hooks
8 and latching lugs 9, which provide a ' snap connection' while still permitting selective
detachment." Id. Mr. Flolid also points to Tucker as an example of a snap-fit coupling.
Id. Mr. Flolid has not provided, however, a sufficient explanation supporting a
97

PUBLIC VERSION
motivation to combine Buchberger and Tucker in the proposed manner, nor has he set
forth adequate explanations as to why a person of ordinary skill in the art would have had
a reasonable expectation of success in doing so. See CX-1352C (Collins Rebuttal WS)
Q/A 243. Eonsmoke did not brief the combination of Buchberger and Tucker as a
separate ground of obviousness and has therefore waived reliance on Tucker for this
limitation.
Additionally, Mr. Flolid has not provided a sufficient explanation supporting a
motivation to modify Buchberger in the proposed manner, nor has Mr. Flolid set forth
adequate explanations as to why a person of ordinary skill in the art would have had a
reasonable expectation of success in doing so. See CX-1352C (Collins Rebuttal WS)
Q/A 215-217. His arguments are based on impermissible hindsight. See id. In
particular, Mr. Flolid did not explain how Buchberger's mouthpiece 5 would have been
modified to implement the snap-fit coupling, or how inhalator housing 3 would have been
modified to engage mouthpiece 5 for the snap-fit coupling. Mr. Flolid did not explain
how the modified device would disclose or render obvious claim 17. To the contrary, a
person of ordinary skill in the art would not have modified Buchberger so that the
mouthpiece is coupled via a snap-fit coupling in the manner proposed. See id. at Q/A
218.
Buchberger states that the mouthpiece is "connected nonseparably to the housing
3" of inhalator component 2. See RX-0107 (Buchberger), ,r [0113]. Buchberger further
explains that "[i]t is favorable in terms of production to manufacture the liquid container
4 and the mouthpiece 5 as separate parts and only to connect said parts subsequently to
the housing 3, for example by an adhesive bonding or welding connection .... In
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PUBLIC VERSION
principle, of course, it is also conceivable to form the liquid container 4 or/and the
mouthpiece 5 integrally with the housing 3. " See id. 	Thus, Buchberger specifically
describes a nonseparable connection of the mouthpiece. See CX-1352C (Collins Rebuttal
WS) QIA 219. A person of ordinary skill would have understood that this nonseparable
connection would have provided a seal to prevent the inhalable aerosol from leaking at
the mouthpiece coupling. A person of ordinary skill in the art, having read Buchberger,
would not have sought to modify the mouthpiece to form a separable connection (e.g.
snap-fit) because Buchberger reveals specific advantages of a nonseparable connection.
See id. at Q/A 220.
Mr. Flolid points to Buchberger' s snap-in hooks 8 and latching lugs 9 as an
example of a snap-fit coupling that could be implemented in the mouthpiece 5. However,
this snap-fit coupling technique is incompatible with the mouthpiece 5. See id. at Q/A
221.
8
96
21)
~
luchbefgtt,
''°' 2,	Mnotated
1
Sn
t
4 	17 	19
~
2
16
C 	D 18
- 	1
lfl I, !Q r
• 	part ,
Pig. 7
C
RX-0107 (Buchberger), FIGS. 2 (annotated), 7.
Inhalator component 2 is coupled to inhalator part 1 via the snap-in hooks 8 and
99

PUBLIC VERSION
latching lugs 9. See RX-0107 (Buchberger), FIGS. 2 (annotated), 7. The snap-in hooks
are carried by cantilevers that extend past the bottom surface on each lateral side of
inhalator component 2. The cantilevers fit over inhalator part 1 to engage with the
latching lugs 9. Buchberger describes that the snap-in hooks 8 couple with the latching
lugs 9 by fitting onto and over the exterior housing wall. See CX-1352C (Collins
Rebuttal WS) Q/A 222. Coupling mouthpiece 5 using this technique would include
implementing snap-in hooks 8 to extend from the sides of the mouthpiece, and
implementing corresponding latching lugs 9 on the lateral walls of housing 3 proximate
to mouthpiece 5. See id. at Q/A 223 . Doing this, however, would interfere with the
coupling of liquid container 4. With this understanding, a person of ordinary skill in the
art would not have sought to modify Buchberger' s mouthpiece to couple using the snap-
in hooks 8 and latching lugs 9. Buchberger thus does not render obvious claim 17 of the
' 568 patent. See id. at Q/A 224.
Independent Claim 20
Eonsmoke argues, inter alia:
Juul does not dispute that Buchberger discloses the following
features of claim 20:
• 	An apparatus comprising:
• 	a vaporizer body comprising:
• 	a power source; ·
• 	a cartridge comprising:
• 	a flattened body having a proximal end, a distal end
opposite the proximal end, a longitudinal axis between the
proximal end and the distal end, and a transverse axis that
is perpendicular to and shorter than the longitudinal axis;
• 	a mouthpiece proximate to the proximal end of the
flattened body;
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PUBLIC VERSION
• 	a reservoir within the flattened body, the reservoir
configured to hold a vaporizable material;
• 	a pair of plates extending in a direction of the longitudinal
axis;
• 	a wick extending along at least the transverse axis, at least a
first portion of the wick disposed between the pair of
plates;
• 	a resistive heating element in contact with the pair of plates
and the wick, wherein at least a second portion of the wick
is configured to contact the vaporizable material when the
vaporizable material is present; and
• 	a pair of flat contact tabs integrally formed from the pair of
plates.
(CX-1352C.0063 ; CDX-0006C.72; Hearing Tr. 476:14-18). The dispute
for claim 20 is therefore whether Buchberger discloses a cartridge
receptacle with a pair of contacts within the cartridge receptacle and
whether it would have been obvious to fold Buchberger' s tabs. Mr. Flolid
correctly testified that Buchberger does disclose a cartridge receptacle and
that the folded tabs would have been obvious to the POSA.
Resp. Br. at 21.
Asserted claim 20 is recited below:
20. [p] An apparatus comprising:
[a] a vaporizer body comprising:
[b] a power source;
[c] a cartridge receptacle; and
[d] a pair of contacts within the cartridge receptacle; and
[e] a cartridge comprising:
[f] a flattened body having a proximal end, a distal end
opposite the proximal end, a longitudinal axis between the
proximal end and the distal end, and a transverse axis that
is perpendicular to and shorter than the longitudinal axis;
[g] a mouthpiece proximate to the proximal end of the
flattened body;
[h] a reservoir within the flattened body, the reservoir
configured to hold a vaporizable material;
[i] a pair of plates extending in a direction of the
longitudinal axis;
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PUBLIC VERSION
[j] a wick extending along at least the transverse axis, at
least a first portion of the wick disposed between the pair of
plates;
[k] a resistive heating element in contact with the pair of
plates and the wick, wherein at least a second portion of the
wick is configured to contact the vaporizable material when
the vaporizable material is present; and
[l] a pair of flat contact tabs integrally formed from the pair
of plates and folded over an outer surface of the flattened
body proximate to the distal end of the flattened body, the
pair of flat contact tabs configured to complete a circuit
with the pair of contacts and the power source when the
distal end is inserted into the cartridge receptacle.
JX-0001 ('568 Patent), claim 20. 19
As discussed below, Buchberger does not disclose claim limitations 20[c ], 20[d],
and 20[1]. See CX-1352C (Collins Rebuttal WS) Q/A 225-226, 232,235.
Claim 20(c)
Buchberger does not disclose claim limitation 20[ c] because it does not disclose
"a cartridge receptacle." Id at Q/A 226-227; RX-0107 (Buchberger), FIGS. 3, 5, 6
(excerpt) (annotated below).
19 JLI has given a letter design~tion for each element of the asserted independent claims.
The letter designations used for the elements of this claim is different for infringement
and validity analysis. The administrative law judge is adopting the different letter
designations as appropriate.
102

ch 	r 	r
FIC. 3,
Exe rpt,
Annotated
lnhal to r
a 	1
12
uch 	rge r,
FIG. 5,
f)(C rpt ,
Annotat d'
PUBLIC VERSION
llJi 	i ll
10 	107 Pl g c nl ct 93
lng3
H
Buchberger,
FIG . 6,
El(cerpt,
Annotated
RX-0107 (Buchberger), FIGS. 3, 5-6 (excerpt) (annotated).
Mr. Flolid opines that Buchberger' s cavities in inhalator part 1 that hold spring contacts
94 correspond to the claimed cartridge receptacle. See RX-0113 (Flolid WS) Q/A 80.
Mr. Flolid' s opinion here is incorrect. See CX-1352C (Collins Rebuttal WS) Q/A 227.
As discussed for claim limitation 12[i], plug contacts 93 of inhalator component 2
are inserted into the cavities holding spring contacts 94 of inhalator part 1 to complete the
circuit between component 2 and part 1. See id. at Q/A 228. The cavities holding spring
contacts 94 do not correspond to the claimed cartridge receptacle because the cavities are
not configured to receive a cartridge, as required by claim limitation 20[ c]. Rather, the
cavities are merely electrical contact receptacles configured to receive electrical contacts.
See id. at Q/ A 229.
Buchberger describes that plug contacts 93 protrude out of the outer surface of the
103

PUBLIC VERSION
housing 3 of inhalator component 2. See RX-0107 (Buchberger), ,r [0148] ; RX-0107
(Buchberger), FIGS. 3, 5-6 (excerpt) (annotated above). When inhalator compon~nt 2 is
coupled to inhalator part 1, plug contacts 93 are received within the spring contact 94
cavities. Housing 3 of inhalator component 2, which is outlined in blue, is positioned
adjacent to and generally flush with the top end of inhalator part 1, which is outlined in
green. RX-0107 (Buchberger), FIGS. 3, 5-6 (excerpt) (annotated above). Therefore, a
person of ordinary skill in the art would have understood the difference between a
cartridge receptacle, as claimed, and an electrical contact receptacle, like spring contact
94. Buchberger thus does not include a cartridge receptacle. CX-1352C (Collins
Rebuttal WS) QIA 230.
Mr. Flolid' s proposed modification of folding plug contacts 93 over the outer
surface of inhalator component 2 would misalign plug contacts 93 and spring contacts 94,
and would thus prevent plug contacts 93 from being inserted into spring contacts 94. As
a result, Mr. Flolid' s modification would render the device incapable of having any
portion of inhalator component 2 inserted into inhalator part 1. The modified spring
contact 94 cavities would not be receptacles of any kind, because they would not receive
any portion of inhalator component 2. Id. at QIA 231 .
Claim 20(d)
Buchberger does not disclose claim limitation 20[d] , because it has no "pair of
contacts within the cartridge receptacle." Id. at QIA 232. Mr. Flolid opines that
Buchberger' s spring contacts 94 correspond to the claimed pair of contacts. RX-0113
(Flolid WS) QIA 81. Mr. Flolid is erroneous. CX-1352C (Collins Rebuttal WS) QIA
233. As described with respect to claim limitation 20[c] , Buchberger does not include the
104

claimed cartridge receptacle.
First prl ng
cont ct 94
6
7
i
Inhalator
part 1
98 	10 96
Buchberg r,
FIG . 3,
Excerpt,
Annotated
PUBLIC VERSION
8
5
20
3
P ug co ntact 93
97
93
lnh lator
__.__.. compon nt 2
Plu con ta cts 93
~ch berger,
FI G.6 ,
Excerpt,
Annotated
RX-0107 (Buchberger), FIGS. 3, 6 (excerpt) (annotated).
Even if it did, Buchberger would not disclose a pair of contacts withirt the cartridge
receptacle, because claim limitation 20[ d] requires that two electrical contacts are located
within a single cartridge receptacle. See RX-0107 (Buchberger), FIGS. 3, 6 (excerpt)
(annotated above). The proposed corresponding components-spring contacts 94--are
not both within a single cartridge receptacle. CX-1352C (Collins Rebuttal WS) Q/A 234.
Rather, each spring contact 94 is disposed within a separate and distinct cavity on
opposite sides of inhalator part 1. Id 	Plug contacts 93 are then separately received
within each cavity. RX-0107 (Buchberger), ,r [0148].
Claim 20(1)
Buchberger does not disclose claim limitation 20[1]. CX-1352C (Collins Rebuttal
WS) Q/A 235; RX-0113 (Flolid WS) Q/A 75; RX-0107 (Buchberger), FIGS. 2, 8
(annotated above), 6 (excerpt) (annotated above). In discussing this integrally formed,
105

PUBLIC VERSION
folded-over contact tabs limitation, Mr. Flolid cross-references his analysis in claim 12[i].
RX-0113 (Flolid WS) Q/A 89. His analysis therefore is erroneous for the same reasons
discussed above for limitation 12[i]. CX-1352C (Collins Rebuttal WS) Q/A 236;
compare CDX-0006C.0067-.0069 with id. at .0075-.0077 (<::;ollins Rebuttal
Demonstrative). Buchberger thus does not disclose claim 20. See CX-1352C (Collins
Rebuttal WS) at Q/A 237.
2. 	Buchberger (RX-0107) and Qiu (RX-0108)
Respondent Eonsmoke argues that Buchberger (RX-0107) in combination with
Qiu (RX-0108) renders obvious claims 12, 17 and 20 of the ' 568 patent. See Resp. Br. at
26-40.
Independent Claim 12
Eonsmoke argues, inter alia:
Complainant does not dispute that Qiu discloses:
• 	A cartridge for use with a vaporization device, the cartridge
compnsmg:
• 	a flattened body having a proximal end, a distal end
opposite the proximal end, a longitudinal axis between the
proximal end and the distal end, and a transverse axis that
is perpendicular to and shorter than the longitudinal axis;
• 	a reservoir within the flattened body and holding a
vaporizable material;
• 	a mouthpiece proximate to the proximal end of the
flattened body.
(CX-1352C.0067 and CDX-0006C.82). The dispute is therefore whether it
would have been obvious over Buchberger to include a heater and folded
tabs as claimed. As set forth below, Mr. Flolid correctly testified that this
modification would have been obvious.
Resp. Br. at 26-27.
106

PUBLIC VERSION
Asserted claim 12 is recited below:
12 . A cartridge for use with a vaporization device, the cartridge
compnsmg:
a flattened body having a proximal end, a distal end opposite
the proximal end, a longitudinal axis between the proximal end
and the distal end, and a transverse axis that is perpendicular to
and shorter than the longitudinal axis;
a reservoir within the flattened body and holding a vaporizable
material;
a mouthpiece proximate to the proximal end of the flattened
body;
[e] a heater comprising:
[f] a pair of plates extending in a direction of the
longitudinal axis,
[g] a wick extending along at least the transverse axis, at
least a first portion of the wick disposed between the pair of
plates, and at least a second portion of the wick disposed
within the reservoir and in contact with the vaporizable
material, and
[h] a resistive heating element directly in contact with each
plate of the pair of plates and in thermal contact with the
wick; and
[i] a pair of flat contact tabs integrally formed from the pair of
plates and folded over an outer surface of the flattened body
proximate to the distal end of the flattened body, the pair of flat
contact tabs extending from the heater and configured to
complete a circuit with the vaporization device when the distal
end is inserted into the vaporization device.
JX-0001 (' 568 Patent), claim 12 .
Claim 12[e)
Mr. Flolid does not show that Qiu and Buchberger disclose claim limitations
12[e], 12[f], 12[g], 12[h], and 12[i]. See CX-1352C (Collins Rebuttal WS) Q/A 247.
First, Mr. Flolid did not demonstrate that Qiu combined with Buchberger discloses the
heater recited in claim limitation 12[e] of the ' 568 patent. See id. at Q/A 248. Mr. Flolid
107

PUBLIC VERSION
opines that "Qiu discloses a heater 311." See RX-0113 (Flolid WS) QIA 94. He then
opines that Buchberger also discloses a heating element (composite 22), which could be
included in Qiu as a simple substitution of one known heater for another. See id. at QIA
71 , 95 . This theory appears to be inconsistent with his expert report. See CX-1352C
(Collins Rebuttal WS) QIA 250. Additionally, Mr. Flolid has not described how Qiu' s
atomizer would be modified in implementing Buchberger's planar composite 22, or how
the modified device would operate. See id. at QIA 251.
Claim 12[0
Qiu combined with Buchberger does not disclose claim limitation 12[f]. See id. at
QIA 252. Mr. Flolid opines that Qiu combined with Buchberger discloses "a pair of
plates extending in a direction of the longitudinal axis." See RX-0113 (Flolid WS) QIA
95. In particular, he argues that a person of ordinary skill in the art would have modified
Qiu' s atomizer with Buchberger' s plate-like contacts 23 , which he opines correspond to
the claimed pair of plates, "as a simple substitution of one known electrical component
connection method (the plates 23 of Buchberger) for another (the existing contacts 331
and wire of Qiu)." See id.
These positions are newly raised in his witness statement, and Mr. Flolid has not
provided a sufficient explanation supporting a motivation to combine the cited references,
or a reasonable expectation of success in doing so. Specifically, Mr. Flolid does not
explain how the proposed modification would or could have been implemented, or how
Qiu (as modified) would have operated. See CX-1352C (Collins Rebuttal WS) QIA 255-
257. Additionally, Mr. Flolid does not address the numerous elements in Qiu-including
contacts 331 and wire- that would need to either be modified or removed in order to
108

PUBLIC VERSION
accommodate Buchberger's plate-like contacts 23. See CX-1352C (Collins Rebuttal WS)
Q/A 255-257.
Claim 12[g)
Qiu combined with Buchberger also does not disclose claim limitation 12[g]. Id
at Q/A 258. Mr. Flolid opines that Qiu's liquid guiding rope 320 and Buchberger's
planar composite 22 each correspond to the claimed wick. See RX-0113 (Flolid WS)
QIA 96. Mr. Flolid opines that liquid storage case 20 is the claimed reservoir: "Qiu
discloses a reservoir, labeled as 20, within the flattened body ... " See RX-0113 (Flolid
WS) Q/A 92; Flolid Tr. 277.
Yet, Qiu's liquid guiding rope 320 is not disposed within liquid storage case 20,
which Mr. Flolid opines corresponds to the claimed reservoir. Id at Q/A 263 .
...N
Q u, F 0 . 2,
Annota ed
RX-0108 (Qiu), FIGS. 1-2 (annotated).
109

PUBLIC VERSION
Instead, a portion of Qiu's liquid guiding rope 320 is wound onto heater 311, while the
two ends ofliquid guiding rope 320 are disposed within the liquid guiding pipe 322. See
CX-1352C (Collins Rebuttal WS) Q/A 264. No portion of Qiu's liquid guiding rope 320
is disposed within Qiu's liquid storage case 20. Mr. Flolid admitted at the hearing that
Qiu's liquid guiding rope 320 is not disposed in liquid storage case 20. Flolid Tr. 243,
276.
As discussed above for claim limitation 12[g] in Ground 1, Buchberger does not
disclose a wick disposed in a reservoir. See CX-1352C (Collins Rebuttal WS) Q/A 259-
260. Even if it did, Mr. Flolid has not provided a motivation to modify Qiu to include
that wick, nor has Mr. Flolid explained why a person of ordinary skill in the art would
have had a reasonable expectation of success in doing so. It remains unclear how Qiu's
atomizer would have been modified to implement Buchberger's wick and/or reservoir.
Id. at QIA 262.
The combination of Qiu and Buchberger thus does not disclose or suggest claim
limitation 12[g]. CX-1352C (Collins Rebuttal WS) Q/A 264.
Claim 12(h)
Qiu combined with Buchberger further does not disclose claim limitation 12[h].
See id. at Q/A 265. Mr. Flolid opines that Qiu's heater 311 corresponds to the claimed
heating element, that liquid guiding rope 320 corresponds to the claimed wick, and that
Buchberger's plate-like contacts 23 correspond to the claimed wick. See RX-0113
(Flolid WS) Q/A 96-97. To the extent that Mr. Flolid is arguing that implementing
Buchberger's wick in Qiu would have been obvious, Mr. Flolid has not provided a
sufficient explanation supporting a motivation to modify Qiu in the proposed manner, or
110

PUBLIC VERSION
a reasonable expectation of success in doing so. Mr . Flolid did not explain how Qiu' s
atomizer would implement Buchberger' s wick, or how the modified device would satisfy
claim limitation 12[h]. See CX-1352C (Collins Rebuttal WS) Q/A 268.
Claim 12[i)
The combination of Qiu and Buchberger does not disclose limitation 12[i]. See
id. at Q/A 269. A person of ordinary skill in the art reading Buchberger would not
modify plug contacts 93 in the manner proposed by Mr. Flolid as discussed above for
claim limitation 12[i] in Ground 1. Qiu likewise does not provide any reason to modify a
Qiu device combined with Buchberger's plug contacts 93 and, in fact, provides specific
reasons not to modify a Qiu device combined with Buchberger' s plug contacts 93 in the
manner proposed by Mr. Flolid. Id. at Q/A 270. Specifically, the contact conductors 331
have indentations or access holes configured to receive the contact probes 44.
Co n ct
o 	uct
331
Cont ct
prob 	44
Qu , FIG . 3,
IJiad.S.:Wll.l Annot 	d
C nt
RX-0108 (Qiu), FIGS. 2-3 (annotated).
111
314
m
Q u, F G. 2,
Anno 	ed

PUBLIC VERSION
When Qiu' s atomizer 330 is inserted into the power supply housing 41 , the
contact probes 44 are inserted into the respective access holes of the contact conductors
331. This allows for a secure electrical and mechanical coupling between the power
supply and the atomizer 330. See CX-1352C (Collins Rebuttal WS) Q/A 271-272. Qiu
describes contact conductors 331 disposed within a contact conductor base 332, and
configured to couple the heater in the atomizing device 30 to the fuel cell 42 in Qiu' s
power supply. See RX-0108 (Qiu), ,r,r [0036]-[0037] .
Buchberger' s modified plug contacts 93 , as implemented in Qiu' s modified
atomizer 330, would protrude out of and fold over the bottom end of the atomizer 330.
See CX-1352C (Collins Rebuttal WS) Q/A 273. Implementing Buchberger' s modified
plug contacts 93 would prevent proper mechanical and electrical coupling of the power
supply of atomizer 330. Id. 	In particular, Buchberger's modified plug contacts would
not have access holes in which contact probes 44 would be received, so the electrical
coupling would be unsecure and unreliable. Further, the protrusion of plug contacts 93
past the bottom end of the atomizer 330 would prevent the atomizer 330 from being
inserted into the power supply housing 41 to secure the mechanical connection between
the power supply and atomizer 330. Qiu combined with Buchberger thus does not render
obvious limitation 12[i]. Qiu and Buchberger therefore do not disclose claim 12 of the
' 568 patent. See id. at Q/A 274.
Dependent Claim 17
Eonsmoke argues:
Qiu does not expressly teach that its mouthpiece is snap-fit to the
flattened body. But snap-fit couplings were notoriously well known, and
thus it would have been obvious to modify Qiu in view of Buchberger to
112

PUBLIC VERSION
include such an arrangement. (RX-0113 .0046, Q/A 99).
Bu chberger teaches snap-in hooks 8 and latching lugs 9, which
provide a "snap connection" while still permitting selective detachment.
Tucker also acknowledges that a snap-fit is a known coupling technique at
paragraph 0089. (RX-0109.0019). A POSA would therefore have found it
obvious to modify Qiu in view of Buchberger to include the claimed snap-
fit arrangement. (RX-0113.0046, Q/A 99).
Resp. Br . at 33.
Mr. Flolid opines that Qiu combined with Buchberger discloses claim 17 because
Qiu' s suction nozzle corresponds to the claimed mouthpiece, and that it would have been
obvious to a person of ordinary skill to modify Qiu, as evidenced by Buchberger, to
include snap fit coupling. See RX-0113 (Flolid WS) Q/A 77. Mr. Flolid admits that Qiu
does not expressly disclose that its mouthpiece is coupled via a snap-fit coupling, but
opines that it would have been obvious to modify Qiu because "snap-fit couplings were
notoriously well-known," and thus it would have been obvious to modify Buchberger to
include such an arrangement. See RX-0113 (Flolid WS) Q/A 77, 99. Mr. Flolid opines
that Buchberger "teaches snap-in hooks 8 and latching lugs 9, which provide a ' snap
connection' while still permitting selective detachment." See id.
Mr . Flolid has not provided a sufficient explanation supporting a motivation to
modify Qiu in the proposed manner, nor has Mr. Flolid set forth adequate explanations as
to why a person of ordinary skill would have had a reasonable expectation of success in
doing so. See CX-1352C (Collins Rebuttal WS) Q/A 279. Specifically, Mr. Flolid has
not explained how Qiu' s suction nozzle would have been modified to implement the
snap-fit coupling. To the contrary, a person of ordinary skill would not have modified
Qiu so that the mouthpiece is coupled via a snap-fit coupling in the manner proposed.
113

PUBLIC VERSION
See id at QIA 280.
Qiu describes that its suction nozzle is inserted into the outer casing 10 so that it
may couple with and puncture the liquid isolating membrane 23 of the liquid storage case
20. See RX-0108 (Qiu), ,r (0029], FIG. 1.
=~ 	,-b,=~'7Dil
S?-.,.'--T-"4-"'-'-T---""I
-	N
!3
0 or
C sing 10
~ -.- ~~ 	~ 	,;;i}l1l l 	UquKI
)I 	-- 1 	ling
QIU, FIG . 1,
Annotated
membraneZJ
RX-0108 (Qiu), FIG. 1 (annotated).
Mr. Flolid did not explain how casing 10 would have been modified to implement the
snap fit coupling. A person of ordinary skill would not have sought to modify Qiu's
suction nozzle using Buchberger' s snap-in hooks 8 and latching lugs 9 because these
components are not used to couple the mouthpiece. See CX-1352C (Collins Rebuttal
WS) QIA 281 . Rather, Buchberger describes that its mouthpiece 5 is connected
nonseparably to the housing 3 of inhalator component 2 using, for instance, an adhesive
bonding or welding connection. See RX-0107 (Buchberger), ,r [0113]. The snap-in
hooks 8 and latching lugs 9 are used to couple inhalator part 1 to inhalator component 2.
A person of ordinary skill would not have looked to these unrel~ted structures to modify
Qiu's suction nozzle. See CX-1352C (Collins Rebuttal WS) QIA 282. Moreover, Qiu's
114

PUBLIC VERSION
suction nozzle is positioned within the outer casing 10, where it would not make sense to
use Buchberger's snap-in hooks 8 and latching lugs 9. Id at Q/A 283. Qiu combined
with Buchberger thus does not render obvious claim 17. Id at Q/A 284.
Independent Claim 20
Eonsmoke argues, inter alia:
Juul does not dispute that Qiu discloses the following features of
claim 20:
• 	An apparatus comprising:
• 	a vaporizer body comprising:
• 	a power source
• 	a cartridge receptacle; and
• 	a pair of contacts within the cartridge receptacle; and
• 	a cartridge comprising:
• 	a flattened body having a proximal end, a distal end opposite the
proximal end, a longitudinal axis between the proximal end and the
distal end, and a transverse axis that is perpendicular to and shorter
than the longitudinal;
• 	a mouthpiece proximate to the proximal end of the flattened body;
• 	a reservoir within the flattened body, the reservoir configured to
hold a vaporizable material.
(CX-1352C.0076 and CDX-0006C.93). The dispute under this invalidity
theory for claim 20 is therefore whether it would have been obvious over
Buchberger to modify Qiu to have the heater and tabs of claim 20. Mr.
Flolid correctly testified that this would have been an obvious
modification.
Resp. Br. at 33-34.
Asserted claim 20 is recited below:
20. [p] An apparatus comprising:
[a] a vaporizer body comprising:
[b] a power source;
[c] a cartridge receptacle; and
[d] a pair of contacts within the cartridge receptacle; and
115

•
PUBLIC VERSION
[e] a cartridge comprising:
[f] a flattened body having a proximal end, a distal end
opposite the proximal end, a longitudinal axis between the
proximal end and the distal end, and a transverse axis that
is perpendicular to and shorter than the longitudinal axis;
[g] a mouthpiece proximate to the proximal end of the
flattened body;
[h] a reservoir within the flattened body, the reservoir
configured to hold a vaporizable material;
[i] a pair of plates extending in a direction of the
longitudinal axis;
[j] a wick extending along at least the transverse axis, at
least a first portion of the wick disposed between the pair of
plates;
[k] a resistive heating element in contact with the pair of
plates and the wick, wherein at least a second portion of the
wick is configured to contact the vaporizable material when
the vaporizable material is present; and
[l] a pair of flat contact tabs integrally formed from the pair
of plates and folded over an outer surface of the flattened
body proximate to the distal end of the flattened body, the
pair of flat contact tabs configured to complete a circuit
with the pair of contacts and the power source when the
distal end is inserted into the cartridge receptacle.
JX-0001 ('568 Patent), claim 20.
Qiu and Buchberger do not disclose claim 20 because their combination does not
teach limitations 20[i], 20[j], 20[k], and 20[1]. See CX-1352C (Collins Rebuttal WS)
Q/A 285. The combination of Qiu with Buchberger does not disclose limitation 20[i] for
the same reasons it does not disclose limitation 12[f]. See CX-1352C (Collins Rebuttal
116

PUBLIC VERSION
WS) Q/A 286; RX-0107 (Buchberger), FIG. 18 (annotated below); RX-0108 (Qiu),
FIGS. 1-2 (annotated above).
Pl 	r
compoai 22
Ext n 	44
R 	,voir
uc.hbt- tr,
flC. 11 ,
Annol.lt
RX-0107 (Buchberger), FIG. 18 (annotated).
The combination does not disclose limitation 200] for the same reasons it does
not disclose limitation 12[g]. See CX-1352C (Collins Rebuttal WS) Q/A 287; RX-0107
(Buchberger), FIG. 18 (annotated); RX-0108 (Qiu), FIGS. 1-2 (annotated). The
combination does not disclose limitation 20[kl for the same reasons it does not disclose
limitation 12[h]. See CX-1352C (Collins Rebuttal WS) Q/A 288; RX-0107
(Buchberger), FIG. 6 (excerpt) (annotated above); RX-0108 (Qiu), FIGS. 2-3 (annotated
above). It does not disclose limitation 20[1] for the same reasons it does not disclose
limitation 12[i]. See CX-1352C (Collins Rebuttal WS) Q/A 289; RX-0107 (Buchberger),
FIG. 6 (excerpt) (annotated above); RX-0108 (Qiu), FIGS. 2-3 (annotated above). Qiu
combined with Buchberger thus does not render obvious claim 20 for reasons discussed
above. Id. at Q/A 290.
D. 	Domestic Industry (Technical Prong)
Complainant asserts claims 12 , 16, 17 and 20 of the ' 568 patent for domestic
117

PUBLIC VERSION
industry. See Compls. Br. at 66 (citing CX-0015C (Collins WS) at Q/A 25, 52; CX-1238
(Importation, Infringement, DI, and PI Stipulation)). The domestic industry products
include the JUUL system, which includes the JUUL device and JUULpods. See Compls.
Br. at 66 (citing CX-0015C (Collins WS) Q/A 279-280).
Dr. Collins physically inspected the JUUL system. He reviewed numerous
documents and materials, as well as photographs of physical samples of the JUUL
system, marketing materials including advertisements, product packaging, user manuals,
information available on public webpages and the like, and technical documents such as
engineering drawings and presentations that describe the structure and assembly of the
JUUL system. See CX-0015C (Collins WS) Q/A 281 ; CX-1212 (JUUL Photo Set 4); JX-
0001 (' 568 Patent), FIGS. 24A, 28D.
1. 	Independent Claim 12
Asserted claim 12 is recited below:
12. A cartridge for use with a vaporization device, the cartridge
compnsmg:
[a] a flattened body having a proximal end, a distal end
opposite the proximal end, a longitudinal axis between the
proximal end and the distal end, and a transverse axis that
is perpendicular to and shorter than the longitudinal axis;
[b] a reservoir within the flattened body and holding a
vaporizable material;
[c] a mouthpiece proximate to the proximal end of the
flattened body;
[d] a heater comprising: a pair of plates extending in a
direction of the longitudinal axis,
[e] a wick extending along at least the transverse axis,
at least a first portion of the wick disposed between the pair
of plates, and at least a second portion of the wick disposed
within the reservoir and in contact with the vaporizable
material, and
118

PUBLIC VERSION
[f] a resistive heating element directly in contact with
each plate of the pair of plates and in thermal contact with
the wick; and
[g] a pair of flat contact tabs integrally formed from the
pair of plates and folded over an outer surface of the
flattened body proximate to the distal end of the flattened
body, the pair of flat contact tabs extending from the heater
and configured to complete a circuit with the vaporization
device when the distal end is inserted into the vaporization
device.
JX-0001 (' 568 Patent), claim 12. 20
Claim 12[Pl
The nJUL system practices claim element 12[p]. The nJUL system includes a
"cartridge for use with a vaporization device." The nJULpod , is a cartridge for use with a
vaporization device-the nJUL device. See CX-0015C (Collins WS) Q/A 284.
Claim 12[al
The nJUL system practices claim element 12[a] because the nJUL system
includes "a flattened body having a proximal end, a distal end opposite the proximal end,
a longitudinal axis between the proximal end and the distal end, and a transverse axis that
is perpendicular to and shorter than the longitudinal axis." See CX-0015C (Collins WS)
Q/A 285; CX-1184 (nJUL Photo Set l) ; CX-0370C (JLI Step 2); CX-0388C (JLI
Image). The cartridge includes a flattened body. See CX-1184 (nJUL Photo Set 1); CX-
0370C (JLI Step 2); CX-0388C (JLI Image). The cartridge' s flattened body is
rectangular and has a first dimension between opposing first and second sides that is
20 JLI has given a letter designation for each element of the asserted independent claims.
The letter designations used for the elements of this claim is different for technical prong
and validity analysis. The administrative law judge is adopting the different letter
designations as appropriate.
119

PUBLIC VERSION
smaller than a second dimension between opposing third and fourth sides. CX-0015C
(Collins WS) QIA 286.
Claim 12(b)
The JUUL system practices claim element 12[b] because the JUUL system
includes "a reservoir within the flattened body, the reservoir configured to hold a
vaporizable material." See CX-0015C (Collins WS) Q/A 287; CX-1184 (JUUL Photo
Set 1). The material in the JUULpod reservoir is a vaporizable material containing
nicotine as shown on JLI's website. See CX-0015C (Collins WS) Q/A 288; CX-1184
(JUUL Photo Set 1).
Claim 12(c)
The JUUL system practices claim element 12[c] because the JUUL system
includes a "mouthpiece proximate to the proximal end of the flattened body." See CX-
0015C (Collins WS) Q/A 289; CX-1184 (JUUL Photo Set 1); CX-0370C (JLI Step 2);
CX-0388C (JLI Image).
Claim 12(d)
The JUUL system practices claim element 12[d] because it includes a "heater
comprising: a pair of plates extending in a direction of the longitudinal axis." See CX-
0015C (Collins WS) Q/A 290; CX-1184 (JUUL Photo Set 1); CX-0378C (JLI Step 12);
CX-0379C (JLI Step 13); CX-0389C (JLI Step 5); CX-0446C (JLI Step 15); CX-0253C
(Pod Assembly Overview). The cartridge has a pair of plates. As shown in CX-0015C
(Collins WS) Q/A 290, CX-1184 (JUUL Photo Set 1), CX-0378C (JLI Step 12), CX-
0379C (JLI Step 13), CX-0389C (JLI Step 5), CX-0446C (JLI Step 15), CX-0253C (Pod
Assembly Overview), the cartridge's plates are two corresponding relatively thin pieces
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PUBLIC VERSION
of material that are used together to provide power to the coil. Portions of the two plates
are also smooth, flat, thin pieces of metal that are parallel and face each other.
Claim 12[e1
The JUUL system practices claim element 12[e] because it includes "a wick
extending along at least the transverse axis, at least a first portion of the wick disposed
between the pair of plates, and at least a second portion of the wick disposed within the
reservoir and in contact with the vaporizable material." See CX-0015C (Collins WS)
Q/A 292; CX-1184 (JUUL Photo Set 1); CX-0380C (JLI Step 14); CX-0381C (JLI Step
15); CX-0382C (JLI Step 19); CX-0383C (JLI Step 21); CX-0384C (JLI Step 25); CX-.
0385C (JLI Step 26); CX-0386C (JLI Step 27); CX-0387C (JLI Step 28); CX-0253C
(Pod Assembly Overview). See CX-1184 (JUUL Photo Set 1) shows that the JUULpod
has a wick extending along at least the transverse axis, with one portion of the wick
disposed between the pair of plates, and another portion disposed within the reservoir and
in contact with the vaporizable material. CX-0380C (JLI Step 14); CX-0381C (JLI Step
15); CX-0382C (JLI Step 19); CX-0383C (JLI Step 21); CX-0384C (JLI Step 25); CX-
0385C (JLI Step 26); CX-0386C (JLI Step 27); CX-0387C (JLI Step 28); CX-0253C
(Pod Assembly Overview) are schematic drawings that further support this conclusion.
CX-0015C (Collins WS) Q/A 293.
Claim 12[0
The JUUL system practices claim element 12[f] because it includes "a resistive
heating element directly in contact with each plate of the pair of plates and in thermal
contact with the wick." See CX-0015C (Collins WS) Q/A 294. CX-1184 (JUUL Photo
Set 1) shows that JUULpod' s heater includes a resistive heating element directly in
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· PUBLIC VERSION
contact with each of the pair of plates and in thermal contact with the wick. See CX-
0380C (JLI Step 14); CX-0381C (JLI Step 15); CX-0382C (JLI Step 19); CX-0383C (JLI
Step 21); CX-0384C (JLI Step 25); CX-0385C (JLI Step 26); CX-0386C (JLI Step 27);
CX-0387C (JLI Step 28); CX-0253C (Pod Assembly Overview) are schematic drawings
that further support this conclusion. CX-0015C (Collins WS) Q/A 295.
Claim 12[g)
The JUUL system practices claim element 12[g] because it includes "a pair of flat
contact tabs integrally formed from the pair of plates and folded over an outer surface of
the flattened body proximate to the distal end of the flattened body, the pair of flat
contact tabs extending from the heater and configured to complete a circuit with the
vaporization device when the distal end is inserted into the vaporization device." See
CX-0015C (Collins WS) Q/A 296; CX-1184 (JUUL Photo Set 1) ; CX-0389C (JLI Step
5); CX-0446C (JLI Step 15); CX-0369C (JLI Step 1) ; CX-0379C (JLI Step 13); CX- .
0253C (Pod Assembly Overview). The JUULpod includes "flat contact tabs." As shown
in CX-1184 (JUUL Photo Set 1) , the contact tabs are made of metal and, thus, are
electrically conductive. Once folded, the contact tabs can electrically couple to
corresponding electrical contacts of the vaporization device, as shown in CX-1184
(JUUL Photo Set 1) .
These flat contact tabs are also "integrally formed. " As discussed above, the
contact tabs are made as a unitary structure and they are formed from a single piece of
metal. See CX-1184 (JUUL Photo Set 1) ; CX-0389C (JLI Step 5); CX-0446C (JLI Step
15); CX-0369C (JLI Step 1) ; CX-0379C (JLI Step 13); CX-0253C (Pod Assembly
Overview).
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To the extent that any differences may exist between the JUULpod and the
features disclosed in claim 12 of the ' 568 patent, such differences are insubstantial. The
JUULpod includes a pair of flat contact tabs that are intended to perform substantially the
same function, in substantially the same way, to achieve substantially the same result, for
example "to complete a circuit with the vaporization device when the distal end is
inserted into the vaporization device," as recited in the above limitation of claim 12.
Thus, this limitation is also met under the doctrine of equivalents. See id. at QIA 299-
300.
2. 	Dependent Claim 16
Asserted claim 16 is recited below:
16. The cartridge of claim 12 , wherein the mouthpiece is fitted
onto and over the proximal end of the flattened body.
JX-0001 (' 568 Patent), claim 16 .
The JUUL system practices claim 16 because the JUUL system includes a
mouthpiece that is "fitted onto and over the proximal end of the flattened body." See
CX-0015C (Collins WS) Q/A 301 ; CX-1184 (JUUL Photo Set 1); CX-0370C (JLI Step
2); CX-0388C (JLI Image). That is, the JUUL system includes every feature of claim 16 ,
as well as claim 12 from which claim 16 depends. See CX-0015C (Collins WS) Q/A
302.
3. 	Dependent Claim 17
Asserted claim 17 is recited below:
17. The cartridge of claim 12 , wherein the mouthpiece is coupled
to the flattened body with a snap-fit coupling.
JX-0001 (' 568 Patent), claim 17.
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The nJUL system practices claim 17 because the nJUL system includes a
mouthpiece that is "coupled to the flattened body with a snap-fit coupling." See CX-
1184 (nJUL Photo Set 1) ; CX-0371C (JLI Step 4); CX-0372C (JLI Step 5); CX-0373C
(JLI Product Step 6); CX-0374C (JLI Step 7); CX-0375C (JLI Step 8); CX-0376C (JLI
Product Step 9). In particular, the mouthpiece couples to the flattened body via a snap-fit
coupling between protrusions on the lateral sides of the flattened body and openings on
the lateral sides of the mouthpiece. See CX-0015C (Collins WS) Q/A 303. To secure the
mouthpiece to the flattened body, the mouthpiece is inserted over the proximal end of the
flattened body, and pressed downwards towards the distal end. As the mouthpiece slides
over the protrusions, the protrusions initially deflect the mouthpiece, causing the
mouthpiece to flex outwards over the protrusions. When the protrusions align with the
mouthpiece openings, the deflected mouthpiece returns, or snaps back, to its original
position, and the protrusions engage with the mouthpiece, thereby effecting the snap-fit
coupling. The engagement secures the mouthpiece to the flattened body. Id. at Q/A 304;
CX -:- 1184 (nJUL Photo Set 1) ; CX-0371C (JLI Step 4); CX-0372C (JLI Step 5); CX-
0373C (JLI Product Step 6); CX-0374C (JLI Step 7); CX-0375C (JLI Step 8); CX-0376C
(JLI Product Step 9). The nJUL system therefore includes every feature of claim 17, as
well as claim 12 from which claim 17 depends. See CX-0015C (Collins WS) Q/A 305.
4. 	Independent Claim 20
Asserted claim 20 is recited below:
20. An apparatus comprising:
a vaporizer body comprising:
_a power source;
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a cartridge receptacle; and
a pair of contacts within the cartridge receptacle; and
[a] a cartridge comprising:
a flattened body having a proximal end, a distal end
opposite the proximal end, a longitudinal axis between the
proximal end and the distal end, and a transverse axis that
is perpendicular to and shorter than the longitudinal axis;
[b] a mouthpiece proximate to the proximal end of the
flattened body;
[c] a reservoir within the flattened body, the reservoir
configured to hold a vaporizable material;
[d] a pair of plates extending in a direction of the
longitudinal axis;
[e] a wick extending along at least the transverse axis, at
least a first portion of the wick disposed between the pair of
plates;
[f] a resistive heating element in contact with the pair of
plates and the wick, wherein at least a second portion of the
wick is configured to contact the vaporizable material when
the vaporizable material is present; and
[g] a pair of flat contact tabs integrally formed from the
pair of plates and folded over an outer surface of the
flattened body proximate to the distal end of the flattened
body, the pair of flat contact tabs configured to complete a
circuit with the pair of contacts and the power source when
the distal end is inserted into the cartridge receptacle.
JX-0001 ('568 Patent), claim 20. 21
The JUUL device practices claim element 20[p] because the JUUL device is an
apparatus having a "vaporizer body comprising a power source, a cartridge receptacle,
and a pair of contacts within the cartridge receptacle." See CX-0015C (Collins WS) Q/A
21 JLI has given a letter designation for each element of the asserted independent claims.
The letter designations used for the elements of this claim is different for technical prong
and validity analysis. The administrative law judge is adopting the different letter
designations as appropriate.
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306; CX-1184 (JUUL Photo Set 1); CX-0364C (JLI Device Image Step 1); CX-0365C
(JLI Device Image Step 7); CX-0366C (JLI Device Image Step 8); CX-0389C (JLI Step
5); CX-0446C (JLI Step 15). For purposes of the technical prong, each of claim elements
20[a] through 20[g] is materially identical to claim elements 12[a] through 12[g],
respectively. See CX-0015C (Collins WS) Q/A 307-313; CX-1184 (JUUL Photo Set 1);
CX-0370C (JLI Step 2); CX-0388C (JLI Image); CX-0378C (JLI Step 12); CX-0379C
(JLI Step 13); CX-0389C (JLI Step 5); CX-0446C (JLI Step 15); CX-0369C (JLI Step 1);
CX-0379C (JLI Product Image Step 13); CX-0253C (Pod Assembly Overview); CX-
0380C (JLI Step 14); CX-0381C (JLI Step 15); CX-0382C (JLI Step 19); CX-0383C (JLI
Step 21); CX-0384C (JLI Step 25); CX-0385C (JLI Step 26); CX-0386C (JLI Step 27); 	·
CX-0387C (JLI Step 28); CX-0364C (JLI Device Image Step 1); CX-0365C (JLI Device
Image Step 7); CX-0366C (JLI Device Image Step 8). The JUULpod therefore practices
all limitations of claim 20, for the reasons discussed above. See CX-1184 (JUUL Photo
Set 1); CX-0370C (JLI Step 2); CX-0388C (JLI Image); CX-0378C (JLI Step 12); CX-
0379C (JLI Step 13); CX-0389C (JLI Step 5); CX-0446C (JLI Step 15); CX-0369C (JLI
Step 1); CX-0379C (JLI Step 13); CX-0253C (Pod Assembly Overview); CX-0380C (JLI
Step 14); CX-0381C (JLI Step 15); CX-0382C (JLI Step 19); CX-0383C (JLI Step 21);
CX-0384C (JLI Step 25); CX-0385C (JLI Step 26); CX-0386C (JLI Step 27); CX-0387C
(JLI Step 28).
VI. 	U.S. Patent No. 10,058,130
United States Patent No. 10,058,130 ("the '130 patent"), entitled "Cartridge for
use with a vaporizer device," issued on August 28, 2018. JX-0002 ('130 Patent). The
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PUBLIC VERSION
' 130 patent issued from Application No. 15/813,089, filed on November 14, 2017. Id
The ' 130 patent application is a continuation of, and claims priority to, Application No.
15/257,748 filed on September 6, 2016, which is a continuation-in-part of other patent
applications. The ' 13 0 patent relates to "apparatuses, including systems and devices, for
vaporizing material to form an inhalable aerosol. Specifically, these apparatuses may
include vaporizers, cartridge for use with a vaporizer device, and vaporizers with
cartridges." JX-0002, 2:32-36. The' 130 patent has a total of 27 claims.
Complainant asserts claims 1, 2 and 4 of the ' 130 patent. See Compl. Br. at 14.
As discussed below, the evidence shows that (1) the asserted claims are infringed by the
accused products; (2) complainants have satisfied the technical prong of the domestic
industry requirement; and (3) the asserted claims are not invalid.
Asserted claims 1, 2 and 4 are recited below:
1. A method of fabricating a cartridge, the method comprising:
[a] forming a storage compartment configured to hold a
vapbrizable material, the storage compartment having a first
end and a second end opposite the first end;
[b] attaching a mouthpiece to the storage compartment at the
second end; and
[c] attaching a heater at the first end, the heater comprising:
a heating element configured to heat the vaporizable
material to generate an aerosol for delivery to a user;
[d] a first plate positioned proximate to a first side of the
storage compartment, the first plate coupled to the heating
element and attached proximate to the first end; and
[e] a second plate positioned proximate to a second side of
the storage compartment, the second plate coupled to the
heating element and attached proximate to the first end, the
first side opposite the second side, the first plate and the
second plate defining a volume therebetween, at least a
portion of the heating element disposed within the volume.
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PUBLIC VERSION
2. The method ·of claim 1, wherein the mouthpiece is attached at
the second end by a snap fit coupling with the storage
compartment.
4. The method of claim 1, wherein the first plate is attached to a
first flexible tab having a first contact surface outside of the heater,
and wherein the second plate is attached to a second flexible tab
having a second contact surface outside of the heater.
JX-0002 (' 130 Patent), claims 1, 2, 4.
A. 	Claim Construction 22
Complainant argues:
A person of ordinary skill in the art ("POSA") is one who is
presumed to be aware of all pertinent art, thinks along conventional
wisdom in the art, and is a person of ordinary creativity. A POSA in the
context of the asserted patents would have had (1) a B.S. in mechanical
engineering, electrical engineering, or an equivalent degree and (2) at least
one year of experience designing consumer products. CX-0015C (Collins
WS) Q/A 33; CX-0016C (Alarcon WS) Q/A 22.
Ziip's expert, Mr. Flolid has proposed that a POSA would have at ·
least a bachelor' s degree in mechanical engineering, electrical
engineering, or an equivalent degree. RX-0113 (Flolid WS) Q/A 19.
Alternatively, Mr. Flolid opined that a POSA could also have had at least
two years' experience designing, developing, or testing electronic
cigarettes or related electromechanical devices, such as electromechanical
devices configured to heat liquid and generate an aerosol. Id. at Q/A 20.
Mr. Flolid further opines that his definition is only "approximate" and that
a skilled artisan could have a higher level of education to make up for less
experience or a higher level of training or skill to make up for less
education. Id. at Q/A 19. Mr. Flolid's definition of a POSA is vague and
incorrect. CX-1353C (Alarcon Rebuttal WS) Q/A 41-42; CX-0015C
22 Respondent Eonsmoke did not discuss any of the disputed claim terms on the merits in
its posthearing briefs. See Joint Outline - Eonsmoke and Joint Reply Outline -
Eonsmoke. Indeed, Eonsmoke's only statement concerning claim construction is the
following:
Ziip applies the agreed upon constructions for any terms that had
agreed upon constructions, as set forth in the Joint Claim Construction
Chart. Otherwise, Ziip applies the plain and ordinary meaning of the term.
Resp. Br. at 3-4.
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PUBLIC VERSION
(Collins WS) Q/A 34. Regardless, the differences between ILi's proposed
qualifications for a POSA and those proposed by Respondents would not
change ILi's infringement or validity analysis. CX-0015C (Collins WS)
Q/A 35 ; CX-1353C (Alarcon Rebuttal WS) Q/A 42.
Compl. Br. at 18-19 (citations omitted).
Respondent argues:
The key decision is the definition of a POSA. Both parties agree
that a POSA would have at least a degree in mechanical or electrical
engineering or a similar degree. And both agree that this POSA would
have some design experience with products. Ziip proposes that this
experience would be at least two years with electronic cigarettes or related
electromechanical devices because this is the subject matter of the patents
at issue.
Ziip' s definition is a better one:
A person of ordinary skill in this art would have (1) at least a B.S.
in mechanical engineering, electrical engineering, or an equivalent
degree and/or (2) at least two years' experience designing,
developing, or testing electronic cigarettes or related
electromechanical devices, such as electromechanical devices
configured to heat liquid and generate an aerosol. This description
is approximate, and a higher level of training or skill might make
up for less education, and vice-versa.
(RX-0113.0005-6, Q/A 18-20).
Juul has proposed a far broader definition - one year designing
consumer products - because Juul wants its POSA to be as ignorant as
possible so as not to see the connections that Ziip claims are obvious. But
Juul ' s definition is deficient, as its expert, Mr. Ramon Alarcon, essentially
admitted when he noted that not every consumer product would be
relevant. (Hearing Tr., at 422:15-423:16).
Ziip' s definition of a POSA as having at least two years' of
experience with devices like an electronic cigarette makes more sense as
this is the type of person would look to the prior art to find solutions to the
known problems. And, as the United States Supreme Court has held, it is
the solving of known problems that is a key determinant of obviousness.
Resp. Br. at 2-3 .
The Staff argues:
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PUBLIC VERSION
JLI contends that for all asserted patents, a person of ordinary skill
in the art would have had (1) a B.S. in mechanical engineering, electrical
engineering, or an equivalent degree and (2) at least one year of
experience designing consumer products." CPreHBr. at 15. Ziip,
Eonsmoke and V4L did not present a contention in their respective pre-
hearing briefs regarding the level of ordinary skill in the art for any of the
asserted patents. Therefore, they waived any such contentions. See
Ground Rule 7.c. Nonetheless, Ziip and Eonsmoke' s expert, Mr. Flolid,
testified that he agreed with Ziip' s apparent contention "that a person of
ordinary skill in the art would have at least (1) a B.S. degree in mechanical
engineering, electrical engineering, or an equivalent degree and/or (2) at
least two years of experience designing, developing, or testing electronic
cigarettes or related electromechanical devices, such as electromechanical
devices configured to heat liquid and generate an aerosol. This description
is approximate, and a higher level of training or skill might make up for
less education, and vice-versa." RX-0113 at Q19.
To the extent the ALJ does not agree that Respondents waived
their contentions as to one of ordinary skill in the art, the Staff agrees with
JLI' s contention, favoring the lesser experience requirement. The Staff,
however, is of the view that the difference between the private parties'
proposals with respect to the level of ordinary skill does not affect the
infringement or invalidity issues in this Investigation.
Staff Br. at 19-20 (citations omitted).
As an initial matter, Eonsmoke did not discuss the level of ordinary skill in the art
for any of the asserted patents in its pre-hearing brief. Therefore, it waived any such
contention. See Ground Rule 7.c.
In any event, JLI' s proposed level of ordinary skill is more persuasive in the
context of the ' 13 0 patent. JLI' s proposed level requires ( 1) a B. S. in mechanical
engineering, electrical engineering, or an equivalent degree, and (2) at least one year of
experience designing consumer products. Thus, the administrative law judge finds that a
person of ordinary skill in the art with respect to the ' 130 patent is a person who has a
B.S. in mechanical engineering, electrical engineering, or an equivalent degree, and at
least one to two years of experience designing consumer products.
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PUBLIC VERSION
2. 	Claim Construction
Below is a chart showing the parties' proposed claim constructions.
Claim Term 	Claim(s) JLl's 	Eonsmoke's 	Staff's
Construction 	Construction 	Construction
Plain meaning,
"coupled" 	1 	which is: 	abandoned 	Same asJLI
"connected"
Plain meaning,
"proximate to" 	1 	which is: "close 	abandoned 	Same asJLI
or near"
"heating element 	Plain meaning 	Plain meaning,
configured to heat 	which is: "a 	which is: "a
[a/the] 	component that 	component that
vaporizable 	transforms 	transforms energy
material to 	1 	electrical energy 	abandoned 	to heat for
generate an 	to heat for 	generating an
aerosol for 	generating an 	aerosol for
delivery to a 	aerosol for 	delivery to a
user" 	delivery to a user_" 	user"
"plate" 	1 "relatively thin abandoned 	SameasJLI
piece of material"
"defining a "bounding a space
between the first
volume 	1 and second abandoned 	SameasJLI
therebetween" plates"
"flexible tab" 	4 "a projection that abandoned 	Same as JLI
can flex"
Compl. Br. at 96-99; Resp. Br. at 3-4; Staff Br. at 55-60.
Eonsmoke did not present any claim construction analyses in its pre-hearing brief,
and thus waived any such contentions. See Ground Rule 7 .c.
a. 	"coupled"
JLI argues and the Staff concurs that the claim term "coupled" is ubiquitous in
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PUBLIC VERSION
patent claims and routinely construed to mean "connected," in a wide variety of contexts
and technologies. See Compl. Br. at 95-96. The ' 130 patent specification is consistent
with this meaning of "coupled" as "connected" is how the specification uses the term,
how the dictionary defines the term, and how a person of ordinary skill in the art would
understand the term in the context of the claim and ' 130 patent. JX-0002 (' 130 Patent),
3:38-41 , 8:46-48 ("the cartridge may couple with the vaporizer using a connector that is a
snap fit, or other mechanical fit that is not a threaded connection"); id. , 9:5-11 , 14:54-60
("The separable coupling may comprise a friction assembly, a snap-fit assembly or a
magnetic assembly."), id. , 44:5-13 ("a cartridge receptacle 21 comprising one or more
interior coupling surfaces"), id. , FIGS. 7B, 8B, 9A-9L, 14, 25A-B, 30, 31A-31L. The
Staff agrees with JLI. See Staff Br. at 57-58.
The administrative law judge has determined that the claim term "coupled"
should be construed to mean "connected."
b. "proximate to"
As discussed above for the ' 568 patent, JLI argues in its brief that the claim term
"proximate to" has a plain meaning, which is "at or near" but JLI's chart shows the plain
meaning JLI proposes is "close or near." See Compl. Br. at 95-96. The Staff concurs
that the claim term "proximate to" has a plain meaning, which is "close or near." See
Staff Br. at 58. The Staff believes "at or near" was a typographical error. See Staff Br. at
58 n.19.
This is how the ' 130 patent specification uses the term. JX-0002 (' 130 Patent),
14:3-5, 15:62-64, 33 :60-61 , 34:41-43 ("below the contact tips"), id., 34:46 ("plates may
affix to pins"), 34:50-51 ("placed between the first heater contact plates 33 and
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PUBLIC VERSION
attached"), id , 42:3-4 ("positioned between"), id , 55:26-29, 56:4-5, 56:6-9, 57:27-30,
57:31-34. The Staff agrees with JLI. See Staff Br . at 58.
The administrative law judge has determined that the claim term "proximate to"
should be construed to mean "close or near."
c. "heating element configured to heat [a/the]
vaporizable material to generate an aerosol for
delivery to a user"
As discussed above for the ' 669 patent, JLI argues that this claim term should be
construed according to its plain meaning, which is: "a component that transforms
electrical energy to heat for generating an aerosol for delivery to a user." See Compl. Br.
at 96. The phrase "for delivery to a user" is a statement of intended use, and does not
impact the proper claim scope. See Compl. Br. at 96. The ' 130 patent specification is
generally consistent with this construction. See JX-0002 (' 130 Patent), 1:60-61 , 20:4-9,
FIGS. 4A-C, 7B-C, 8A-B, 9A-L, lOA-C, 14, 17A-B, 24A-B, 25A-B, 26A, 28C-D, 30.
However, as argued by the Staff, the ' 130 patent specification also discloses that
instead of electrical energy, the heating element may "alternatively [use] a chemical
reaction (e.g., combustion or other exothermic reaction) [to] provide energy to the
heating element." JX-0002 (' 130 Patent), 19:53-56; see Staff Br. at 58-59. Thus, the
specification teaches that energy need not be limited to electrical energy.
The administrative law judge has determined that the claim term "heating element
configured to heat [a/the] vaporizable material to generate an aerosol for delivery to a
user" should be given its plain and ordinary meaning, i.e. , "a component that transforms
· energy to heat for generating the aerosol for delivery to a user ."
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PUBLIC VERSION
d. "plate"
As discussed above for the ' 568 patent, JLI argues and the Staff concurs that the
plain meaning of "plate" is a relatively thin piece of material. The ' 130 patent
specification is consistent with this construction. See JX-0002 (' 130 Patent)~ 14:3-5
("thin plates"), 34:18-20 (specifying "a flat plate," implying that plates are not
necessarily flat or "flat plate" would be redundant), FIGS. 7B, 8B, 24A , 28C, 28D, 30.
"Plate" should be therefore be constrμed consistently and for the same reasons.
The administrative law judge has determined that the claim term "plate" should be
construed to mean "relatively thin piece of material."
e. "defming a volume therebetween"
JLI argues and the Staff concurs that this claim term should be construed as
"bounding a space between the frrst and second plates." See Conipl. Br. at 97. The '130
patent specification supports this construction, as shown in the figures. See JX-0002
(' 130 Patent), FIGS. 7B, 8B, 9A-L, l0A-C , 14, 28D, 30. A person of ordinary skill in the
art would understand first and second plates "defining a volume therebetween" to refer to
plates bounding a space between them. The Staff agrees with JLI. See Staff Br. at 59-60.
The administrative law judge has determined that the claim term "defining a
volume therebetween" should be construed to mean "bounding a space between the first
and second plates."
f. "flexible tab"
JLI argues and the Staff concurs that the claim term "flexible tab" is a projection
(or projecting device) in the context of this claim. See Compl. Br. at 97-98. The
specification is consistent with JLI's proposed construction. See JX -0002 (' 130 Patent),
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PUBLIC VERSION
34:43-46, 35:14- 15 ("Flexible tabs may be inserted into the heater contacts."), 55 :45-49,
56:42-44 ("the first plate and the first flexible tab define a first formed shape, the first
flexible tab extending out of the heater chamber"), 56:65-67. The Staff agrees with JLI.
See Staff Br . at 60.
The administrative law judge has determined that the claim term "flexible tab"
I
should be construed to mean "a projection that can flex."
B. Infr:-ingement Analysis of the '130 Patent
JLI asserts claims 1, 2 and 4 of the ' 130 patent. JLI has demonstrated by a
preponderance of the evidence that Eonsmoke' s accused products infringe the asserted
claims of the ' 130 patent. See Compl. Br. at 98-105; CX-0015C (Collins WS) Q/A 315-
452. Indeed, Eonsmoke did not contest infringement and did not present any non-
infringement arguments in its post-hearing briefs. See Joint Outline - Eonsmoke; Joint
Reply Outline - Eonsmoke.
Nonetheless, the administrative law judge adopts JLI's infringement analysis with
respect to Eonsmoke and provides the following infringement analysis of the ' 13 0 patent.
1. Importation and Accused Products
On August 5, 2019, the administrative law judge issued an initial determination
granting complainant' s motion for summary determination with respect to importation.
See Order No. 35 (Aug. 5, 2019) at 4-5, aff'd in part , Commission Determination to
Review in Part an Initial Determination Granting in Part Complainant' s Motion for
Summary Determination of Importation, Infringement, and Domestic Industry (Sept. 4,
2019) (Commission determining not to review importation).
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Eonsmoke is based in Clifton, New Jersey, and is an importer, distributor, and
seller of ENDS devices and pods, including the Eonsmoke devices and pods
manufactured by Ziip. The accused products with respect to Eonsmoke include the
Eonsmoke device, the Eonsmoke v2.0 device, Eonsmoke (Eon) pod, and the 4X pod
(individually and collectively, "Eonsmoke accused products"). See Compl. Br. at 10
(citing CX-0958C (Eonsmoke Invoices 13); CX-0858 (Eonsmoke' s Supp. Responses to
JLI's RFAs)).
JLI provided the following table showing the Eonsmoke accused products that are
alleged to infringe the asserted patent claims:
,.
Accused Product 	'669 	'915 	'568 	'130
Eonsmoke Resl!ondent 	1, 2, 13 	1, 6, 21 	12 , 17 , 	1, 2, 4
Eonsmoke device 20
Eonsmoke v2 device (stipulated
representative)
Eonsmoke pods (stipulated representative)
4Xpods
Compl. Br. at 220.
Eonsmoke' s accused products include the Eonsmoke pod and the 4X pod. The
Eonsmoke pod is representative of the other pods accused for respondent Eonsmoke,
including the 4X pod, for the same reasons discussed above. See CX-0015C (Collins
WS) Q/A 327-328.
a. 	Independent Claim 1
Asserted claim 1 is recited below:
1. A method of fabricating a cartridge, the method comprising:
136

PUBLIC VERSION
[a] forming a storage compartment configured to hold a
vaporizable material, the storage compartment having a first
end and a second end opposite the first end;
[b] attaching a mouthpiece to the storage compartment at the
second end; and
[c] attaching a heater at the first end, the heater comprising:
a heating element configured to heat the vaporizable
material to generate an aerosol for delivery to a user;
[d] a first plate positioned proximate to a first side of the
storage compartment, the first plate coupled to the heating
element and attached proximate to the first end; and
[e] a second plate positioned proximate to a second side of
the storage compartment, the second plate coupled to the
heating element and attached proximate to the first end, the
first side opposite the second side, the first plate and the
second plate defining a volume therebetween, at least a
portion of the heating element disposed within the volume.
JX-0002 (' 130 Patent), claim 1.
As discussed below, the representative Eonsmoke pods embody every feature of
claim 1. See CX-0015C (Collins WS) Q/A 405. Additionally, these pods are made by a
process that practices every step of the claimed method, and therefore infringe under 35
U. S.C. § 271(g).
Claim l(a)
The Eonsmoke pods practice claim element 1[a] because these pods are formed
using "[a] method of fabricating a cartridge, the method comprising: forming a storage
compartment configured to hold a vaporizable material, the storage compartment having
a first end and a second end opposite the first end." See CX-0015C (Collins WS) Q/A
346 (Eonsmoke Pod). The liquid in the pods is a vaporizable material. See CX-0015C
(Collins WS) Q/A 348 (Eonsmoke).
137

PUBLIC VERSION
Claim l(b)
The Eonsmoke pods practice claim element 1 [b] because these pods are formed
by "attaching a mouthpiece to the storage compartment at the second end." See CX-
0015C (Collins WS) Q/A 356 (Eonsmoke).
Claim l(c)
The Eonsmoke pods practice claim element 1[c] because these pods are formed
by "attaching a heater at the first end, the heater comprising: a heating element
configured to heat the vaporizable material to generate an aerosol for delivery to a user."
See CX-0015C (Collins WS) Q/A 362 (Eonsmoke).
Claim l(d)
The Eonsmoke pods practice claim element 1[d] because the heater at the first end
of the pod includes "a first plate positioned proximate to a first side of the storage
compartment, the first plate coupled to the heating element and attached proximate to the
first end; and a second plate positioned proximate to a second side of the storage
compartment, the second plate coupled to the heating element, and attached proximate to
the first end." See CX-0015C (Collins WS) Q/A 375 (Eonsmoke).
The claim term "coupled" has been construed in accordance with its plain
meaning, which is "connected." The first and second plates are "coupled" to the heating
element. As shown in CX-1192 (Eonsmokev2 Photo Set 2), CX-1270C (Eonsmokev2
Photo Set 1) , CX-1250C (Photo Set 3), CX-1251C (Photo Set 1) , the ends of the heating
element, or coil, are connected to the plates by crimping respective prongs on the plate,
thereby affixing the ends of the coil to the plate. After crimping, the coil is both
electrically and physically connected to the plate. See CX-0015C (Collins WS) Q/A 377
138

PUBLIC VERSION
(Eonsmoke).
The claini term "plate" has been construed to mean "relatively thin piece of
material." The cartridge includes this limitation. This component is a relatively thin
piece of material. It is generally smooth, flat, and metal. See CX-0015C (Collins WS)
Q/A 378 (Eonsmoke).
Claim l(e)
The Eonsmoke pods practice claim element 1[e] because these pods include the
limitation "the first side opposite the second side, the first plate and the second plate
defining a volume therebetween, at least a portion of the heating element disposed within
the volume."
The Eonsmoke pods meet the limitation of claim 1[e] under the correct
construction of the claim term "defining a volume therebetween." That term has been
construed to mean "bounding a space between the first and second plates." As shown
below, the first and second plates bound a space therebetween. A portion of the wick is
disposed in that space. The first and second plates are parallel to each other and face
each other.
139

PUBLIC VERSION
CX-1192.0011-.0012 (Eonsmokev2 Photo Set 2) (annotated).
Specifically, the blue lines outline the volume defined between the first plate and second
plate. See CX-0015C (Collins WS) Q/A 397-398 (Eonsmoke).
b. 	Dependent Claim 2
Asserted claim 2 is recited below:
2. The method of claim 1, wherein the mouthpiece is attached at
the second end by a snap fit coupling with the storage
compartment.
JX-0002 (' 130 Patent), claim 2.
Each representative Eonsmoke pod includes every feature of claim 2, as well as
claim 1 from which claim 2 depends, either literally or under the doctrine of equivalents.
See CX-0015C (Collins WS) Q/A 436. In these pods "the mouthpiece is attached at the
second end by a snap fit coupling with the storage compartment." In particular, the
mouthpiece couples to the storage c·ompartment via a snap-fit coupling between
protrusions on the lateral sides of the storage compartment and openings on the lateral
140

I
PUBLIC VERSION
sides of the mouthpiece. See CX-0015C (Collins WS) Q/A 409 (Eonsmoke).
To the extent that any differences may exist between the Eonsmoke pods and the
features recited in claim 2, a person of ordinary skill in the art would have understood
these differences to be insubstantial. The pod mouthpiece attaches to the storage
compartment with a snap-fit coupling- in other words performs substantially the same
function- in substantially the same way, to achieve substantially the same result-to
secure the mouthpiece to the flattened body- as in claim 2. Thus, this claim is also met
under the doctrine of equivalents. See CX-0015C (Collins WS) Q/A 411 (Eonsmoke).
The Eonsmoke pod storage compartment is coupled to the mouthpiece by a snap-
fit coupling. See id. at Q/A 415 (Eonsmoke). The mouthpiece couples to the storage
compartment by a snap-fit coupling because, as described above, the coupling is achieved
when the mouthpiece is deflected by the protrusions, and then elastically returned to its
original position when the protrusions and openings align, snapping into place and
engaging. See id.
c. Dependent Claim 4
Asserted claim 4 is recited below:
4. The method of claim 1, wherein the first plate is attached to a
first flexible tab having a first contact surface outside of the heater,
and wherein the second plate is attached to a second flexible tab
having a second contact surface outside of the heater.
JX-0002 (' 130 Patent), claim 4.
Each representative Eonsmoke pod includes every feature of claim 4, as well as
claim 1 from which claim 4 depends. See CX-0015C (Collins WS) Q/A 452. These pods
practice claim 4 because the pods are formed "wherein the first plate is attached to a first
141

PUBLIC VERSION
flexible tab having a first contact surface outside of the heater, and wherein the second
plate is attached to a second flexible tab having a second contact surface outside of the
heater." See CX-0015C (Collins WS) Q/A 440 (Eonsmoke).
CX-1192.0019-.0020 (Eonsmokev2 Photo Set 2); CX-1270C.0018-.0019 (Eonsmokev2
Photo Set 1) (annotated).
The first flexible tab has a first contact surface outside the heater and the second
flexible tab has a second surface outside the heater. The first plate and the second plate,
outlined in green, are attached to the first flexible tab having a first contact surface
outside the heater and the second flexible tab having a second surface outside the heater
142

PUBLIC VERSION
outlined in blue. See CX-0015C (Collins WS) Q/A 441 (Eonsmoke).
The Eonsmoke pods meet this limitation under the correct construction of the
claim term "flexible tab." The administrative law judge has determined that the claim
term "flexible tab" should be construed to mean "a projection that can flex." The tab
projects from the plate and can be folded over without breaking. CX-0015C (Collins
WS) Q/A 442 (Eonsmoke).
C. 	Validity of the '130 Patent
Respondent Eonsmoke argues that (1) Tucker (RX-0109) anticipates claims 1 and
2 of the ' 130 patent; (2) Tucker (RX-0109) alone renders obvious claim 2 of the ' 130
patent; (3) Tucker (RX-0109) in combination with Buchberger (RX-0107) renders
obvious claims 1, 2 and 4 of the ' 130 patent; and (4) Tucker (RX-0109) in combination
with Backstrom (RX-0105) renders obvious claims 1 and 2 of the ' 130 patent. See Resp.
Br. at 40-48. Eonsmoke argues and JLI and the Staff do not dispute that prior art alleged
by Eonsmoke are prior to the priority date of the ' 13 0 patent. See id. at 4.
For the reasons set forth below, Eonsmoke has not shown by clear ana'convincing
evidence that asserted claims 1, 2 and 4 of the ' 13 0 patent are invalid.
1. 	Tucker (RX-0109) Alone
Eonsmoke argues that (1) Tucker (RX-0109) anticipates claims 1 and 2 of the
' 130 patent; and (2) Tucker (RX-0109) alone renders obvious claim 2 of the ' 130 patent.
See Resp. Br. at 40-44.
Eonsmoke argues, inter alia:
Mr. Flolid correctly testified that Tucker discloses each and every
element of claims 1 and 2. Juul' s response relies on a strained
143

PUBLIC VERSION
interpretation of the term "storage compartment," alleging that Tucker's
storage compartment is limited to its reservoir and nothing more.
However, Juul's expert, Dr. Collins, admitted at the hearing that the
claims do not require the "storage compartment" to be one piece. (Hearing
Tr., 471:8-10). Dr. Collins further admitted that the heater is not limited
to the elements recited in the claim. (Hearing Tr., 471:11-472:6).
Resp. Br. at 40.
Tucker does not anticipate or render obvious claims 1 and 2 because Tucker does
not disclose claim limitations l[c], l[d], l[f], l[g], l[h], and claim 2 (using Mr. Flolid's
claim element breakdown). See CX-1352C (Collins Rebuttal WS) Q/A 37. Each
limitation or claim is discussed below.
Asserted claim 1 is recited below:
1. [a] A method of fabricating a cartridge, the method comprising:
(b] forming a storage compartment configured to hold a
vaporizable material, the storage compartment having a first
end and a second end opposite the first end;
[c] attaching a mouthpiece to the storage compartment at the
second end; and
[d] attaching a heater at the first end, the heater comprising:
[e] a heating element configured to heat the vaporizable
material to generate an aerosol for delivery to a user;
[f] a first plate positioned proximate to a first side of the
storage comp~ent, the first plate coupled to the heating
element and attached proximate to the first end; and
[g] a second plate positioned proximate to a second side of
the storage compartment, the second plate coupled to the
heating element and attached proximate to the first end, the
first side opposite the second side,
[h] the first plate and the second plate defining a volume
therebetween, at least a portion of the heating element
disposed within the volume.
144

JX-0002 (' 130 Patent), claim I. 23
Claim Uc]
PUBLIC VERSION
Eonsmoke argues that Tucker discloses claim limitation 1[c], which recites
"attaching a mouthpiece to the storage compartment at the second end" by identifying
Tucker' s mouth end insert 8·as corresponding to the ~laimed "mouthpiece," and by
characterizing the entire replaceable cartridge 70 of Figure 21 as a "storage compartment
configured to hold a vaporizable material." See RX-0113 (Flolid WS) Q/A 117.
Cartr
Tucker, FIO . 21 ,
Anno led
RX-0109 (Tucker), FIG. 21 (annotated).
'1
This reading of Tucker is incorrect. See CX-1352C (Collins Rebuttal WS) Q/A
.39; RX-0109 (Tucker), FIG. 21 (annotated). Mr . Flolid relies on the erroneous
generalization that the entire replaceable cartridge 70 of Figure 21 is the "storage
compartment configured to hold a vaporizable material" recited in claim 1. See CX-
1352C (Collins Rebuttal WS) Q/A 40. This opinion is erroneous because a person of
23 JLI has given a letter designation for each element of the asserted independent claims.
The letter designations used for the elements of this claim is different for infringement
and validity analysis. The administrative law judge is adopting the different letter
designations as appropriate.
145

PUBLIC VERSION
ordinary skill in the art would not have understood Tucker' s replaceable cartridge 70 to
be a storage compartment. Rather, the storage compartment in Tucker is its liquid supply
reservoir 22, as that is the structure of Tucker that holds the liquid material. See id. at
Q/A 41.
When properly characterized, even assuming Tucker' s mouth end insert 8 is a
"mouthpiece" as that term is used in the ' 130 patent, and is actually attached to outer tube
6 of the replaceable cartridge 70 rather than liquid supply reservoir 22, which a person of
ordinary skill would again understand to be the claimed storage compartment, Tucker
does not disclose claim limitation 1[c], which recites "attaching a mouthpiece to the
storage compartment." See id. at Q/A 42.
Claim l[d)
Tucker does not disclose attaching a heater to the end of the storage compartment
that is opposite to the end where the mouthpiece is attached. See CX-1352C (Collins
Rebuttal WS) Q/A 43-44. Mr. Flolid opines that Tucker discloses limitation l[d]
("attaching a heater at the frrst end, the heater comprising"), referring to Tucker' s
"heaters .14a, 14b, end portions 27, 27' , stripes 140, 140', and leads 145, 146" of Figures
21-23 as corresponding to the claimed "heater ." See RX-0113 (Flolid WS) Q/A 118. Mr.
Flolid then states that "leads 27 are attached at the first end of the replacement cartridge
146

PUBLIC VERSION
70." 	See id.
RX-0109 (Tucker), FIG. 21 (annotated), FIG. 22.
This opinion is unpersuasive for three reasons. See CX-1352C (Collins Rebuttal
WS) Q/A 44-45. RX-0109 (Tucker), FIG. 21 (annotated), 22.
First, Mr. Flolid' s opinion relies on the same erroneous generalization discussed
for limitation 1[c]. Specifically, a person of ordinary skill in the art would not have
understood Tucker' s replaceable cartridge 70 to be the claimed storage compartment.
Because claim limitation 1[d] requires that the heater be attached "at the first end" of the
storage compartment, which is located opposite the location of the mouthpiece, Mr.
Flolid' s understanding of what "the first end" is in Tucker is fundamentally incorrect. As
a result, neither heaters 14a, 14b nor end portions 27, 27' are connected to an end of
receptacle 70 that is opposite of the mouth end insert 8, as required by claim limitation
l[d]. See CX-1352C (Collins Rebuttal WS) Q/A 46.
Second, Tucker' s electrical leads 26--which Mr. Flolid referred to as "leads
27 "-are not a part of the heater. See CX-1352C (Collins Rebuttal WS) Q/A 47. Tucker,
itself, identifies components 14a and 14b as multiple "heaters." RX-0109 (Tucker),
147

PUBLIC VERSION
[0035], [0101]. Indeed, Mr. Flolid admitted this: See Flolid Tr. 195. As shown in
Figures 21 and 22, the electrical leads 26-or "leads 27 "-are not part of the heaters 14a,
14b, but rather are intermediary components configured to couple the contact strips 140,
140' to the battery 1. See RX-0109 (Tucker), ,r [0107], FIG. 22. Mr . Flolid admitted that
Tucker is configured to generate heat at heaters 14a and 14b, not at leads 27. See Flolid
Tr. 200. In sum, the leads are not part ofTucker•s heaters 14a and 14b, and heaters 14a
and 14b are not attached at the first end of the storage compartment, as recited in claim
limitation l[d]. See CX-1352C (Collins Rebuttal WS) Q/A 47.
Third, even accepting that replaceable cartridge 70 corresponds to the claimed
storage compartment, Tucker' s heaters 14a, 14b, which Mr. Flolid opines corresponds to
the claimed "heater," are positioned in an equidistant fashion from the first end and the
second end of cartridge 70, and are not opposite of the mouth end insert 8. See RX-0109
(Tucker), FIG. 21 (annotated above). Thus, Tucker does not disclose claim limitation
l[d], which recites "attaching a heater at the first end." See CX-1352C (Collins Rebuttal
WS) Q/A48.
Claim l[fl
Mr. Flolid opines that Tucker discloses limitation 1[f] ("a first plate positioned
proximate to a first side of the storage compartment, the first plate coupled to the heating
element and attached proximate to the first end"), suggesting that Tucker' s panel 13 la
corresponds to the claimed "first plate." See RX-0113 (Flolid WS) Q/A 120. Mr.
Flolid' s opinion is erroneous for at least the following reasons. See CX-1352C (Collins
148

PUBLIC VERSION
Rebuttal WS) Q/A 50.
First, Mr. Flolid's opinion relies on the same incorrect generalization discussed
for the storage compartment of claim limitations 1[c] and 1[d].
RX-0109 (Tucker), FIGS. 22-23.
Under a proper characterization, Mr. Flolid's opinion that panel 13 la corresponds
to the claimed "first plate" cannot be correct. As Figures 22 and 23 above show, panel ·
131 a is part of liquid supply reservoir 22 (i.e., the claimed "storage compartment").
However, claim limitation 1[t] requires that the first plate be "positioned proximate to a
first side of the storage compartment." Panel 131 a is not a separate component from and
attached proximate to the storage compartment. See CX-1352C (Collins Rebuttal WS)
Q/A 51.
Second, even assuming that panel 131 a constitutes the recited plate, and that
cartridge 70 constitutes the recited storage compartment, liquid supply reservoir 22,
including panel 13 la, is not attached proximate to the first end of Tucker's cartridge 70,
as required by the claim limitation. See id at Q/A 53-54.
149

PUBLIC VERSION
Tuc;ker, FIG . 21 ,
An11otat~
RX-0109 (Tucker), FIG. 21 (annotated).
117
As illustrated in Figure 21 , Tucker' s panel 131 a is positioned approximately
equidistant from the first end and the second end of cartridge 70. See RX-0109 (Tucker),
FIG. 21 (annotated). Tucker' s panel 131a is therefore not attached proximate to the first
end of Tucker' s cartridge 70. See CX-1352C (Collins Rebuttal WS) Q/A 55.
Third, Tucker' s panel 13 la is not a component of the heater, as claim limitation
l[f] requires, "the heater comprising ... a first plate ... ." See RX-0109 (Tucker), FIG. 21
(annotated above), 22. Mr. Flolid acknowledges that the recited plates must be part of the
claimed heater. See Flolid Tr. 313-314. Yet, Tucker' s panel 131a is a wall of the
reservoir tank 22. See RX-0109 (Tucker), 1 [0102], 1 [0102] (describing panels 13 la and
131 b as part of the tank reservoir 22), FIGS. 21-22. The reservoir tank 22 merely
supplies the liquid material for heating by the heaters 14a and 14b. Reservoir tank 22,
including panels 131 a and 131 b, are not involved in the heating of the liquid material. In
fact, Mr . Flolid does not identify panel 131 a as a part of Tucker' s heater, describing the
heater as "element 14a, 14b, end portions 27, 27', stripes 140, 140 ', and leads 145, 146."
RX-0113 (Flolid WS) Q/A 118. Panel 131a is not included. Accordingly, Tucker does
not meet the claim limitation. See CX-1352C (Collins Rebuttal WS) Q/A 56.
150

PUBLIC VERSION
Claim l[g)
Tucker does not disclose or render obvious claim limitation 1[g] . See id. at QIA
57. Mr . Flolid opines that Tucker discloses "a second plate positioned proximate to a
second side of the storage compartment, the second plate coupled to the heating element
and attached proximate to the first end, the first side opposite the second side," as
required by claim limitation 1[g], pointing to Tucker' s panel 131 b as the claimed "second
plate." See RX -0113 (Flolid WS) QIA 121. Mr . Flolid' s opinion is erroneous for at le8.$t
the following reasons. See CX-1352C (Collins Rebuttal WS) QIA 58.
First, Mr. Flolid' s opinion relies on the same erroneous generalization discussed
for claim limitations 1[c], 1[d] , and 1[fl. Claim limitation 1[g] requires that the second
plate, allegedly panel 131b, be "positioned proximate to a second side of the storage
compartment." Panel 131 b cannot constitute the claimed second plate, because it is not a
separate component from and attached proximate to the storage compartment. See id. at
QIA 59-60.
Second, Tucker explains that the reservoir 22 is made of plastic or fiberglass, not
metal. See RX-0109 (Tucker), ,r [0088].
Third, even assuming panel 131 b constitutes the recited plate, and that cartridge
70 constitutes the recited storage compartment, liquid supply reservoir 22, including
panel 131b, is not attached proximate to the first end of Tucker' s cartridge 70, as required
by the claim limitation. It is equidistant from both ends. See CX-1352C (Collins
Rebuttal WS) QIA 61-62.
151

PUBLIC VERSION
RX-0109 (Tucker), FIG. 23.
Tucker' s panel 131 b is positioned approximately equidistant from the first end
and the second end of cartridge 70, and is therefore not proximate either end relative to
the other. See CX-1352C (Collins Rebuttal WS) Q/A 63; RX-0109 (Tucker), FIG. 23.
Fourth, as Mr . Flolid acknowledges, the recited plates must be part of the heater.
See Flolid Tr. 313-314. Yet, Tucker's panel 131b is not a component of the heater, as
required by claim limitation 1[f]. Tucker' s panel 131 bis a wall of the reservoir tank 22.
RX-0109 (Tucker), , [0102], FIGS. 21 (annotated above), 22. The reservoir tank 22
supplies the liquid material to the heater, but is not involved in the heating of the liquid
material. Mr. Flolid' s own identification of the heater components does not include panel
131b. See RX-0113 (Flolid WS) Q/A 118; CX-1352C (Collins Rebuttal WS) Q/A 64.
Fifth, Tucker does not meet this claim limitation because panel 131 b is not
coupled to Tucker' s heater 14a. Claim limitations 1[f] and 1[g] require that the heating
element is coupled to both the first and second plates. These claim limitations refer to
only one heating element, and that each plate is coupled to the same element. See CX-
1352C (Collins Rebuttal WS) Q/A 65. Under Mr. Flolid's analysis, Tucker' s heater 14a
is allegedly coupled to panel 131 a, and heater 14b is allegedly coupled to a different
.
152

PUBLIC VERSION
component- 	panel 131b. Accordingly, Tucker does not meet the requirements of the
claim limitation 1[g] . See id at QIA 66.
Claim l[h]
Tucker does not disclose or render obvious claim limitation 1[h]. See id at Q/A
67. Mr . Flolid opines that Tucker discloses "the first plate and the second plate defining
a volume therebetween, at least a portion of the heating element disposed within the
volume," as required by claim 1 [h] , arguing that Tucker' s heaters 14a and 14b
correspond to the claimed "heating element." See RX-0113 (Flolid WS) Q/A 118. That
opinion is incorrect. Tucker' s heaters 14a and 14b are electrically resistive wires wrapped
or coiled around wicks 28a and 28b, respectively. See RX-0109 (Tucker), , [0091] ; CX-
1352C (Collins Rebuttal WS) Q/A 68-69.
Heater 14 b 115
Volume defined between
panels 131 a and 131 b
RX-0109 (Tucker), FIG. 21 (excerpt) (annotated).
As shown in Figure 21 , heaters 14a and 14b are both disposed outside of the
volume defined between panels 131 a and 131 b. See CX-1352C (Collins Rebuttal WS)
Q/A 70; RX-0109 (Tucker), FIG. 21 (excerpt) (annotated). Mr. Flolid agrees. Flolid Tr.
198. Therefore, heaters 14a and 14b cannot be "disposed within the volume" defined by
153

PUBLIC VERSION
the first and second plates, as required by limitation l[h]. See CX-1352C (Collins
Rebuttal WS) Q/A 70.
Mr . Flo lid opines that Tucker describes an embodiment wherein a portion of the
heater is disposed internally of tank reservoir 22. See RX-0113 (Flolid WS) Q/A 121.
He opines that leads 145 and 146 are a portion of the heater, and are therefore located
within the volume defined by the first and second plates. While Tucker describes leads
145 and 146 as being "disposed internally of the tank reservoir 22," it does not support
the opinion that leads 145 and 146 are a part of heater 14a. See RX-0109 (Tucker), 1
[0104]; CX-1352C (Collins Rebuttal WS) Q/A 73.
Tucker describes leads 145 and 146 as electrical components that connect heaters
14a and 14b to the contact stripes 140 and 140' . See RX-0109 (Tucker), 1 [0104].
Tucker further describes heaters 14a and 14b as terminating at end portions 27 and 27' ,
and positions leads 145 and 146 internally of tank reservoir 22. See CX-1352C (Collins
Rebuttal WS) Q/ A 73 . Based on this configuration, a person of ordinary skill would have
understood leads 145 and 146 to be mere intermediary components between the heater
and the contact stripes. Therefore, a person of ordinary skill in the art would have
understood that leads 145 and 146 are not a part of heater 14a. See id. at Q/A 74.
The claim phrase "heating element configured to heat [a/the] vaporizable material
to generate an aerosol for delivery to a user" has been construed to mean "a component
that transforms energy to heat for generating an aerosol for delivery to a user." Leads
145 and 146 are not components of the heater 14a because they do not play a role in
''transform[ing] electrical energy to heat for generating an aerosol for delivery to a user."
See CX-1352C (Collins Rebuttal WS) Q/A 75.
154

PUBLIC VERSION
Tucker states that "the connection," i. e. , leads 145 and 146, "between the
uncoiled, end portions 27, 27' (see FIG. 5) _ofthe heater 14 and the electrical leads 26 are
highly conductive and temperature resistant while the heater 14 is highly resistive so that
heat generation occurs primarily along the heater 14 and not at the contacts." See RX-
0109 (Tucker), ,r [0051]. Thus, leads 145 and 146 are not capable of generating heat for
heating the liquid material within reservoir tank 22, nor are leads 145 and 146 intended to
generate heat for heating the liquid material. See CX-1352C (Collins Rebuttal WS) Q/A
76. Mr. Flolid agrees that leads are not configured to generate heat. See Flolid Tr. 200.
Instead, they are configured to provide an electrical connection between contact strips
140 and 140' and heater 14a. Leads 145 and 146 have a low resistance so that the
electrical connection is not impeded. See id. at Q/A 77.
If the liquid material were to be heated by leads 145 and 146 within the tank
reservoir 22, it could not be properly vaporized and then aerosolized or delivered to a
user because air does not enter, and vapor or aerosol cannot exit tank reservoir 22.
Instead, Tucker describes that the liquid material can be drawn out of tank reservoir 22 to
heater 14a by wick 28a. See RX-0109 (Tucker), ,r [0106] ; CX-1352C (Collins Rebuttal
WS) QIA 78. Tucker therefore does not render obvious claim 1 of the '130 patent. See
CX-1352C (Collins Rebuttal WS) Q/A 79-80.
Dependent Claim 2
Eonsmoke argues:
Tucker discloses a mouthpiece 8, which is specifically referred to
as a "mouth-end insert 8" at paragraph 0036. (RX-0109.0013). The term
"insert" suggests that the mouth-end insert 8 is "inserted" into the
replaceable cartridge 70 by a snap fit coupling. (RX-0113.0059, Q/A
124) . ...
155

PUBLIC VERSION
To the extent Tucker does not teach that "the mouthpiece is
attached at the second end by a snap fit coupling with the storage
compartment," it would have been obvious to the POSA with an
engineering background and experience to modify Tucker such that its
mouth-end insert 8 is attached at the second end by a snap-fit coupling.
Snap fits were a well-known mechanical interface that would have been
known to a POSA having knowledge of basic mechanical principles. In
fact, Tucker itself explicitly states that a snap-fit is a known coupling
technique. (RX-0109.0017, para. 0089); (RX-0113 .0059, Q/A 124).
Tucker discloses the remaining features of claims 1 and 2, as set
forth above.
Resp. Br. at 44.
Asserted claim 2 is recited below:
2. The method of claim 1, wherein the mouthpiece is attached at
the second end by a snap fit coupling with the storage
compartment.
JX-0002 (' 130 Patent), claim 2.
Tucker alone does not render obvious claim 2. See CX-1352C (Collins Rebuttal
WS) Q/A 82. Eonsmoke argues that Tucker discloses "the method of claim 1, wherein the
mouthpiece is attached at the second end by a snap fit coupling with the storage
compartment," as recited in claim 2. See RX-0113 (Flolid WS) Q/A 124. Mr. Flolid' s
opinion is wrong for the following reasons.
First, Mr. Flolid's opinion relies on the same incorrect generalization discussed in
the analysis of claim limitations 1[c], 1[d] , 1[t], and 1 [g] above. A person of ordinary
skill in the art would have understood Tucker' s liquid supply reservoir 22, and not
replaceable cartridge 70, to correspond to the claimed storage compartment. With this
correct understanding, Tucker' s mouth end insert 8 is coupled to outer tube (or casing) 6
of cartridge 70, and not the second end of the storage compartment- 	i.e., Tucker's liquid
156

PUBLIC VERSION
supply reservoir 22 that holds the liquid material. See CX-1352C (Collins Rebuttal WS)
Q/A 84.
Second, Tucker' s mouth end insert 8 is not coupled to cartridge 70 via a snap-fit
coupling. Tucker is silent as to the connection of mouth end insert 8 to cartridge 70, but
to a person of ordinary skill in the art, this figure shows a press fit. See id at Q/A 85.
Mr. Flolid' s opinion that the term "' insert' strongly suggests ... that the mouth-end insert
8 is ' inserted' into the replaceable cartridge 70 by a snap fit coupling," is not supported
by any reasoning or evidence. See RX-0113 (Flolid WS) Q/A 124; CX-1352C (Collins
Rebuttal WS) Q/A 86. Mouth end insert 8 can be inserted and attached to casing 6 of
cartridge 70 in a number of ways, such as by a press (friction) fit, adhesives, or screw
attachments. See CX-1352C (Collins Rebuttal WS) Q/A 87.
Mr. Flolid further opines that, "to the extent Tucker does not teach a snap fit
coupling, it would' have been obvious to modify Tucker such that its mouth-end insert 8 is
attached at the second end by a snap-fit coupling." See RX-0113 (Flolid WS) Q/A 124.
As evidence for this opinion, Mr. Flolid stated that "Tucker itself acknowledges at
paragraph 0089 that a snap-fit is a known coupling technique." See id ; CX-l352C
(Collins Rebuttal WS) Q/A 88. Mr . Flolid did not provide any other evidence or
reasoning. See CX-1352C (Collins Rebuttal WS) Q/A 89. He has therefore not provided
a sufficient explanation supporting a motivation to implement snap-fit coupling of mouth
end insert 8, nor did Mr. Flolid set forth adequate explanations as to why a person of
ordinary skill in the art would have had a reasonable expectation of success in doing so.
See id at Q/A 90. Mr. Flolid' s testimony does not explain how a person of ordinary skill
would have implemented the snap-fit coupling, how the modified casing of cartridge 70
157

PUBLIC VERSION
would have operated, or how the modified cartridge 70 and mouth end insert 8 would
have satisfied claim 2. See id. at Q/A 91.
Tucker' s snap-fit coupling is not in reference to mouth end insert 8. Rather,
Tucker merely mentions that reservoir tank 22 may use a snap-fit coupling. See RX-0109
(Tucker), ,r,r [0089] , [0098] , [0105]. Mr. Flolid did not , and cannot, point to any teaching
or suggestion by Tucker that would motivate the specific asserted modification of
implementing snap-fit coupling of mouth end insert 8. A person of ordinary skill would
not have been motivated to modify the mouth-end insert 8 and cartridge 70 with a snap-
fit coupling. See CX-1352C (Collins Rebuttal WS) Q/A 92-94.
2. 	Tucker (RX-0109) and Buchberger (RX-0107)
Eonsmoke argues that Tucker (RX-0109) in combination with Buchberger (RX-
0107) renders obvious claims 1, 2 and 4 of the ' 130 patent. See Resp. Br . at 44-47.
Eonsmoke argues, inter alia:
Juul admits that Tucker discloses the following features of claim 1:
• 	A method of fabricating a cartridge, the method comprising:
• 	forming a storage compartment configured to hold a vaporizable
material, the storage compartment having a first end and ·a second
end opposite the first end;
• 	attaching a mouthpiece to the storage compartment at the second
end ; and
• 	attaching a heater at the first end , the heater comprising:
• 	a heating element configured to heat the vaporizable material to
generate an aerosol for delivery to a user.
(CX-1352C.0028-29 and CDX-0006C.21). The dispute here is therefore
centered on whether it would have been obvious to substitute Tucker' s
electrical leads for Buchberger' s electrical plates as a simple substitution
of one type of conductive element for another with predictable results.
Mr . Flolid correctly testified that this would have been an obvious
modification to the POSA with an engineering background and 	-
experience. This POSA would have had knowledge of these basic
158

PUBLIC VERSION
electrical principles.
Resp. Br. at 44-45.
Mr. Flolid relies on Buchberger only for claims 1 and 4. His analysis for claim 2
therefore is wrong for the same reasons discussed above with respect to Tucker alone.
Mr. Flolid's reference to Buchberger in his analysis of claim 1 concerns only
whether the '130 patent requires the first and second plates to be conductive. See RX-
0113 (Flolid WS) Q/A 123. Mr. Flolid acknowledges that Tucker's plates 131a and 131b
are not conductive. See id. at Q/A 122. He then opines "[i]t would have been obvious to
replace Tucker's electrical leads with the electrical plates disclosed in Buchberger." See
id. at QIA 123. In particular, Mr. Flolid identifies Buchberger's plate-like contacts 23 as
the alleged electrical components. See CX-1352C (Collins Rebuttal WS) Q/A 97. Yet, a
person of ordinary skill in the art would not have replaced Tucker's plates 131 a and 131 b
with any elements of Buchberger, including plate-like contacts 23. See id. at Q/A 98.
Independent Claim 1
Eonsmoke argues, inter a/ia:
To the extent the "first plate positioned proximate to a first side of
the storage compartment, the first plate coupled to the heating element and
attached proximate to the first end" and the "second plate
positioned proximate to a second side of the storage
compartment, the second plate coupled to the heating element
and attached proximate to the first end, the first side opposite the
second side, the first plate and the second plate defining a
volume therebetween, at least a portion of the heating element
disposed within the volume" are deemed to be electrical
elements, these features are taught by Buchberger. (RX-
0113.0058-59, Q/A 123).
Buchberger teaches teach a first plate positioned
proximate to a first side of the storage compartment, the first
plate coupled to the heating element and attached proximate to
159

PUBLIC VERSION
the first end and a second plate positioned proximate to a second side of
the storage compartment, the second plate coupled to the heating element
and attached proximate to the first end, the frrst side opposite the second
side, the frrst plate and the second plate defining a volume therebetween,
at least a portion of the heating element disposed within the volume -
"plate-like contacts 23 " with a composite formed therebetween. (RX-
0113 .0058-59, Q/A 123).
It would have been obvious to the POSA having an engineering
background and experience to replace Tucker' s electrical leads with the
electrical plates disclosed in Buchberger. It would have been obvious to
replace Tucker' s electrical leads with the electrical plates disclosed in
Buchberger as a simple substitution of one type of conductive element for
another with predictable results. (RX-0113 .0058-59, Q/A 123). KSR , 550
U.S. at 416. These are basic electrical principles, of which a POSA would
have been aware.
Tu cker discloses the remaining limitations of claims 1 and 2, as set
forth abov e.
Resp. Br. at 45-46.
Asserted claim 1 is recited below:
1. [a] A method of fabricating a cartridge, the method comprising:
[b] forming a storage compartment configured to hold a
vaporizable material, the storage compartment having a first
end and a second end opposite the frrst end;
[c] attaching a mouthpiece to the storage compartment at the
second end; and
[d] attaching a heater at the first end, the heater comprising:
[e] a heating element configured to heat the vaporizable
material to generate an aerosol for delivery to a user;
[f] a frrst plate positioned proximate to a first side of the
storage compartment, the frrst plate coupled to the heating
element and attached proximate to the frrst end; and
[g] a second plate positioned proximate to a second side of
the storage compartment, the second plate coupled to the
heating element and attached proximate to the frrst end, the
frrst side opposite the second side,
[h] the frrst plate and the second plate defining a volume
therebetween, at least a portion of the heating element
160

PUBLIC VERSION
disposed within the volume.
JX-0002 (' 130 Patent), claim 1.
Claim l[fl
Tucker combined with Buchberger does not disclose claim limitations 1 [f] , 1[g],
and l[h]. See CX-1352C (Collins Rebuttal WS) Q/A 99. First, Tucker and Buchberger
do not disclose claim limitation l[f]. See CX-1352C (Collins Rebuttal WS) Q/A 100.
Eonsmoke argues that Tucker and Buchberger disclose "a first plate positioned proximate
to a first side of the storage compartment, the fust plate coupled to the heating element
and attached proximate to the first end." Mr. Flolid opines that Tucker' s panel 131a
corresponds to the claimed "first plate." See RX-0113 (Flolid WS) Q/A 120. For the
same reasons discussed above for limitation 1[f] with respect to Tucker alone, Mr.
Flolid's opinion is incorrect. See CX-1352C (Collins Rebuttal WS) Q/A 101. Mr.
Flolid' s reference to Buchberger does not save his opinions. See id
Mr. Flolid identifies Buchberger' s plate-like contacts 23 as the alleged electrical
components, but does not explain why a person of ordinary skill would have been
motivated to "replace Tucker' s electrical leads with the electrical plates disclosed in
Buchberger ." See RX-0113 (Flolid WS) Q/A 123; CX-1352C (Collins Rebuttal WS)
Q/A 102; RX-0109 (Tucker), FIG. 21 (annotated). Mr. Flolid did not provide an
explanation as to why a person of ordinary skill would have been motivated to combine
Tucker with Buchberger, why a person of ordinary skill would have had a reasonable
expectation of success in doing so, how Tucker' s modified device would operate, or how
the modified device meets claim 1. Mr. Flolid' s opinion uses improper hindsight. See
CX-1352C (Collins Rebuttal WS) Q/A 103.
161

PUBLIC VERSION
A person of ordinary skill in the art would have understood that the different
sizes and shapes of Tucker's electronic cigarette 60 and Buchberger's inhalator
component 2 prevent a simple swapping of components. See RX-0107 (Buchberger),
FIG. 9 (annotated), 21 (excerpt) (annotated).
Tuck, r, FIG . 21 ,
Excerpt, Annotated
RX-0107 (Buchberger), FIG. 9 (annotated), 21 (excerpt) (annotated).
Tucker's cylindrical e-cigarette 60 is "about the same size as a conventional
cigarette." RX-0109 (Tucker), ,r [0077]. Conversely, Buchberger's rectangular inhalator
is much larger, approximately half the size of a cigarette pack. See RX-0107
(Buchberger), ,r,r [0108], [0123]. The distance between Buchberger's plate-like contacts
alone is almost twice the diameter of Tucker's entire electronic cigarette 60. Id at ,r
[0123]; CX-1352C (Collins Rebuttal WS) Q/A 104.
As illustrated above in RX-0107 (Buchberger), FIG. 9 (annotated), 21 (excerpt)
(annotated), a person of ordinary skill in the art would have realized that the internal
162

PUBLIC VERSION
components ofBuchberger ' s inhalator component 2 were specifically configured to work
with the unique flat composite structure and fit within the relatively large, rectangular
inhalator component 2. A person of ordinary skill in the art would also have realized that
Buchberger' s components could not be easily implemented into Tucker' s smaller,
cylindrical cartridge 70. More specifically, a person of ordinary skill would have
understood that Buchberger' s plate-like contacts 23 would not fit within Tucker's
cartridge 70 by themselves, let alone in combination with the other components within
the cartridge 70. Conversely, a person of ordinary skill would have understood that the
components of Tucker' s cartridge 70 were specifically configured to fit within the
smaller cylindrical cartridge 70. In fact, Tucker uses thin leads 26, as opposed to larger
conductive devices such as plates, to accommodate the small size of Tucker' s cartridge
70. With this understanding, the person of ordinary skill would not have sought to
I
implement Buchberger' s plate-like contacts 23 in Tucker' s cartridge. See CX-1352C
(Collins Rebuttal WS) Q/A 105.
Additionally, a person of ordinary skill would not have replaced Tucker' s leads
26 with Buchberger' s plate-like contacts 23, because these components peeform different
functions. See RX-0107 (Buchberger), FIGS. 5-6 (excerpt) (annotated).
163

10 	107
95
11
, FG . 5,
Excupt, Anrn>taa.d
PUBLIC VERSION
chbe 11 , FIQ , t ,
Ei:cerpt, Annotated
RX-0107 (Buchberger), FIGS. 5-6 (excerpt) (annotated).
Tucker' s leads 26 couple Tucker's heaters 14a, 14b to electrical contacts
internally within cartridge 70. See CX-1352C (Collins Rebuttal WS) Q/A 106. In
contrast, Buchberger' s plate-like contacts 23 protrude out of inhalator component 2 to
form plug contacts 93 , which couple with the external spring contacts 94 of inhalator part
1. See id. They are also used in feeding liquid to the wick of Buchberger. These parts
do not represent a simple substitution or yield a predictable result because
implementation ofBuchberger' s plate-like contacts 23 would not achieve the internal
coupling performed by Tucker' s leads. See id.
Buchberger' s plug contacts 93 are also incompatible with the threaded connection
used to couple Tucker' s cartridge 70 with second section 72. See RX-0107 (Buchberger),
FIGS. 5-6 (excerpts) (annotated above). Tucker's device includes a threaded connection
205 that couples Tucker' s cartridge -70 with second section 72. See RX-0109 (Tucker), ,r
164

PUBLIC VERSION
[0037]. In contrast, Buchberger's inhalator component 2 includes plug contacts 93 that
protrude from inhalator component 2, and are received within corresponding spring
contacts 94 of inhalator part 1. See CX-1352C (Collins Rebuttal WS) Q/A 107.
Buchberger's plate-like contacts 23 protrude out of inhalator component 2 to form
plug contacts 93 , which engage spring contacts 94 through longitudinal movement. See
RX-0107 (Buchberger), FIGS. 5-6 (excerpt) (annotated). If Buchberger' s plate-like
contacts 23 were implemented in Tucker, Buchberger's plug contacts 93 would interfere
with the mechanical coupling between Tucker's cartridge 70 and its second section 72, as
Tucker's second section 72 is not configured to accommodate such protruding contacts.
See CX-1352C (Collins Rebuttal WS) Q/A 108. The protruding plug contacts would
prevent second section 72 from meeting and/or aligning with cartridge 70. See id
Buchberger's plug contacts 93 would further interfere with Tucker's threaded
connection 205. IfBuchberger's plate-like contacts 23 and corresponding plug contacts
93 were to be implemented in Tucker's cartridge 70, cartridge 70 would be unable to
twist or rotate for effecting threaded connection 205 once plug contacts 93 were received
by corresponding contact receptacles in second section 72. See id at Q/A 109. A person
of ordinary skill would have expected that implementation ofBuchberger's plate-like
contacts 23 (and corresponding plug contacts 93) would render Tucker's electronic
cigarette 60 inoperable by preventing cartridge 70 from mechanically and electrically
coupling to second section 72. See id.
A person of ordinary skill in the art would not have been motivated to implement
Buchberger's first plate within Tucker's cartridge 70. The dimensional and structural
differences between the devices are such that Buchberger's plates would not fit within
165

PUBLIC VERSION
Tucker' s electronic cigarette, and Tucker's threaded connection 205 is incompatible with
Buchberger' s plug contacts 93. See id at Q/A 110.
Even if implemented in Tucker' s cartridge 70, Buchberger' s plate-like contacts 23
would not be components of the heater, as required by claim limitation l[f]. See id at
QIA 111 . As discussed above for claim limitation 1[d] with respect to Tucker alone, the
electrical leads 26 are not components of Tucker' s heater. Thus, if the electrical leads 26
are replaced by Buchberger' s alleged plates, then those plates would not be components
of Tucker' s heater either. See CX-1352C (Collins Rebuttal WS) Q/A 112. Even if
Buchberger' s alleged plates were implemented in Tucker, the modified cartridge 70
would still not meet limitation 1[f], which requires that the heater comprise the "first
plate." See id
Claim l[gl
Claim limitation 1[g], relating to the second plate, presents the exact same
problems as limitation 1[f]. It therefore is deficient for the same reasons. See id at Q/A
113.
Claim l[hl
The combination of Tucker and Buchberger also does not disclose claim
limitation l[h] . See CX-1352C (Collins Rebuttal WS) Q/A 114-115. Mr. Flolid' s
opinion here is the same as discussed above for limitations 1[f] and 1[g], and is wrong for
the same reasons. See CX-1352C (Collins Rebuttal WS) Q/A 116; RX-0113 (Flolid WS)
Q/A 123.
Additionally, implementation ofBuchberger ' s plate-like contacts 23 would not
meet the claim limitation because: (a) plate-like contacts 23 do not define a volume
166

PUBLIC VERSION
therebetween; and (b) even if plate-like contacts 23 defined a volume therebetween,
neither of Tucker' s heating elements 14a or 14b would be disposed within the volume.
See CX-1352C (Collins Rebuttal WS) Q/A 117; RX-0107 (Buchberger), FIGS. 9, 21.
H a
nd 	31 b
FIG. 21 , Excerpt
Annotat d
1 5
RX-0107 (Buchberger), FIGS. 9 (annotated), 21 (excerpt) (annotated).
As shown, the plate-like contacts 23 do not define a volume therebetween
because they are very thin and substantially coplanar, and positioned laterally from each
other. See RX-0107 (Buchberger), , [0151]. The space between such plate-like contacts
does not constitute a volume, as claimed. See CX-1352C (Collins Rebuttal WS) Q/A
118-119. Even if it did, the heaters 14a and 14b of Tucker would be placed outside the
volume, not therebetween. See CX-1352C (Collins Rebuttal WS) Q/A 118-119; RX-
0109 (Tucker), FIGS. 21 (annotated), 22-23.
The heaters 14a and 14b would thus not be disposed within a volume defined
between Buchberger' s plate-like contacts 23 in Mr. Flolid' s proposed combination where
Tucker' s electrical leads are replaced with plate-like contacts 23. See CX-1352C (Collins
167

PUBLIC VERSION
Rebuttal WS) Q/A 120. Tucker combined with Buchberger thus does
not render obvious claim 1 of the ' 130 patent. See id. at Q/A 121.
Dependent Claim 2
As discussed above, Tucker combined with Buchberger does
not disclose claim limitations 1[f], l[g] , and 1[h]. See CX-1352C
(Collins Rebuttal WS) Q/A 99. Claims 2 depends from claim 1. Thus,
for the same reasons discussed above, Tucker in combination with
3
Buchberger does not establish a prima facie case of obviousness with respect to claim 2.
Dependent Claim 4
Eonsmoke argues:
To the extent Tucker does not disclose flexible tabs, Buchberger at
paragraphs 0060 and 0148 discloses the first plate is attached to a first
flexible tab (93) having a first contact surface outside of the heater, and
wherein the second plate is attached to a second flexible tab (93) having a
second contact surface outside of the heater. (RX-0107.0037; RX-
0107.0050).
Buchberger states " In a development of the invention, the plate-
like contacts protrude out of the outer surface of the housing in the form of
two plug contacts. The two plug contacts are provided in order to supply
the required electric energy to the heating element." (RX-0107.0037,
Paragraph 0060). It would have been obvious to replace Tucker' s
electrical leads with the electrical plates disclosed in Buchberger as a
simple substitution of one type of conductive element for another with
predictable results. (RX-0113.0059-60, Q/A 125). KSR, 550 U.S. at 416.
168

PUBLIC VERSION
Juul and the Staff have proposed the
definition of "a projection that can flex" for
the term "flexible tab." (Joint Claim
Construction Chart at page 9). Buchberger' s
tab 93 meets this definition. Alternatively, it
would have been obvious to provide the tab
93 to be made from a flexible material, as it
was known to the the POSA having
engineering background and experience to
provide electrical connectors to be made of
a flexible material.
Resp. Br. at 46-47.
Asserted claim 4 is recited below:
4. The method of claim 1, wherein the first plate is attached to a
first flexible tab having a first contact surface outside of the heater,
and wherein the second plate is attached to a second flexible tab
having a second contact surface outside of the heater.
JX-0002 ('130 Patent), claim 4.
The combination of Tucker and Buchberger does not disclose or render obvious
claim 4 of the ' 13 0 patent, which recites "wherein the first plate is attached to a first
flexible tab having a first contact surface outside of the heater, and wherein the second
plate is attached to a second flexible tab having a second contact surface outside of the
heater." See CX-1352C (Collins Rebuttal WS) Q/A 123. Eonsmoke argues that, "[t]o
the extent Tucker does not disclose_flexible tabs, Buchberger at paragraphs 0060 and
0148 discloses the first plate is attached to a first flexible tab, labeled as 93, having a first
contact surface outside of the heater, and wherein the second plate is attached to a second
flexible tab, labeled as 93 having a second contact surface outside of the heater." See
RX-0113 (Flolid WS) Q/A 125.
169

PUBLIC VERSION
As discussed above, a person of ordinary skill in the art would not have
implemented Buchberger's plug contacts 93 in Tucker as Mr. Flolid suggests. See CX-
1352C (Collins Rebuttal WS) Q/A 125-126. Furthermore, Buchberger's plug contacts 93
are not "flexible tabs," as claimed.
Buchberger's plate-like contacts 23 protrude longitudinally from the bottom end
of inhalator component 2 to form plug contacts 93, which couple with the external spring
contacts 94 of inhalator part 1. See RX-0107 (Buchberger), FIGS. 5-6 (excerpt)
(annotated).
20 	96
10 	107
Spring contact
94 receive the
plug cont els 93
95
11
Spring contacts 93
4
46,48
RX-0107 (Buchberger), FIGS. 5-6 (excerpt) (annotated).
Plug contacts 93 engage spring contacts 94 longitudinally without the need for
bending. See CX-1352C (Collins Rebuttal WS) Q/A 129-131; RX-0107 (Buchberger), ,r
[0148]. A person of ordinary skill in the art would have understood that plug contacts 93
are substantially rigid to securely couple with spring contacts 94. The plug contacts
would be unable to be received within spring contacts 94 when bent. See CX-1352C
(Collins Rebuttal WS) Q/A 132.
170

PUBLIC VERSION
Mr. Flolid opines in the alternative that "it would have been obvious to provide
the tab 93 to be made from a flexible material, as it was known to provide electrical
connectors to be made of a flexible material," but does not provide any reasoning or
motivation as to why a person of ordinary skill would choose to make plug contacts
flexible. See RX-0113 (Flo lid WS) QIA 125. In fact, a person of ordinary skill would
not have made Buchberger' s plug contacts 93 to flex for at least the reason that plug
contacts 93 would be unable to be received in the corresponding spring contacts 94 when
bent relative to the bottom surface of inhalator component 2 discussed above. See CX-
1352C (Collins Rebuttal WS) Q/A 134. Tucker combined with Buchberger thus does not
render obvious claim 4 of the ' 130 patent. See id. at Q/A 135.
3. 	Tucker (RX-0109) and Backstrom (RX-0105)
Eonsmoke argues that Tucker (RX-0109) in combination with Backstrom (RX-
0105) renders obvious claims 1 and 2 of the ' 130 patent. See Resp. Br. at 47-48.
Eonsmoke argues:
Similar to the modification in view of Buchberger' s plates, it
alternatively would have been obvious to modify Tucker in view of
Backstrom' s plates.
To the extent the "first plate positioned proximate to a first side of
the storage compartment, the first plate coupled to the heating element and
attached proximat~ to the first end" and the "second plate positioned
proximate to a second side of the storage compartment, the second plate
coupled to the heating element and attached proximate to the first end, the
first side opposite the second side, the first plate and the second plate
defining a volume there between, at least a portion of the heating element
disposed within the volume" are deemed to be electrical elements, these
features are taught by DE102006004484Al to Backstrom. (RX-
0105.0010); (RX-0113.0058-59, Q/A 123).
171

PUBLIC VERSION
Backstrom teaches "first plate positioned proximate to a first side
of the storage compartment, the first plate coupled
to the heating element and attached proximate to the
first end" and the "second plate positioned
proximate to a second side of the storage
compartment, the second plate coupled to the
heating element and attached proximate to the first
end, the first side opposite the second side, the first
plate and the second plate defining a volume
:sz
41
1
therebetween, at least a portion of the heating
element disposed within the volume." Backstrom' s
42 	•
Figure 2 shows two plates with a volume therebetween and a portion of
the heating element disposed within the volume. (RX-0105 .0010); (RX-
0113.0058-59, Q/A 123).
It would have been obvious to replace Tucker' s electrical leads
with the electrical plates disclosed in Backstrom. It would have been
obvious to replace Tucker' s electrical leads with the electrical plates
disclosed in Backstrom as a simple substitution of one type of conductive
element for another with predictable results. (RX-0113.0058-59, Q/A
123). KSR, 550 U.S. at 416.
Tucker discloses the remaining limitations of claims 1 and 2, as set
forth above.
Resp. Br. at 47-48.
Mr. Flolid does not rely on Backstrom to disclose any of the subject matter recited
in dependent claim 2. His opinions for these claims are wrong for the same reasons
discussed above with respect to Tucker alone. Furthermore, Tucker combined with
Backstrom does not disclose claim limitations 1[f] , 1[g], and 1[h].
Mr. Flolid references Backstrom for only one limitation, similar to his reliance on
Buchberger in the previous section with respect to Tucker in combination with
Buchberger. See RX-0113 (Flolid WS) Q/A 123. His analysis is similarly incorrect. See
CX-1352C (Collins Rebuttal WS) Q/A 138. Mr. Flolid opines that, like Buchberger,
Backstrom ''teach[es] a first plate positioned proximate to a first side of the storage
172

PUBLIC VERSION
compartment, the first plate coupled to the heating element and attached proximate to the
first end." See RX-0113 (Flolid WS) Q/A 123. He states " [i]t would have been obvious
to replace Tucker' s electrical leads with the electrical plates disclosed in Buchberger .. . or
Backstrom." See id
Mr. Flolid points to Backstrom' s Figure 2 for the proposition that Backstrom
discloses two plates with a volume therebetween, and a portion of the heating element
disposed within the volume. See id Mr. Flolid does not identify the components from
Figure 2 of Backstrom that he believes correspond to the claimed first and second plates.
See CX-1352C (Collins Rebuttal WS) Q/A 143. It appears that Mr. Flolid is referring to
Backstrom' s electrical filter contacts 42. However, these cylindrical contacts are not
plates at all. See id at Q/ A 144. A person of ordinary skill in the art would not have
replaced Tucker' s leads 26 with Backstrom' s electrical filter contacts 42, which are more
akin to the electrical contacts within Tucker' s threaded connection 205. These contacts
are configured to couple to Tucker' s second section 72, which is external to cartridge 70.
See id at Q/A 145.
The differences between Backstrom' s electrical filter contacts 42 and
Buchberger' s plate-like contacts 23 are immaterial for purposes of rebutting Mr. Flolid' s
opinion that Tucker combined with Backstrom renders claim limitations 1[f], 1[g], and
l[h] obvious. The combination of Tucker and Backstrom therefore does not disclose or
render obvious "a second plate positioned proximate to a second side of the storage
compartment, the second plate coupled to the heating element and attached proximate to
the first end, the first side opposite the second side, the first plate and the second plate
173

PUBLIC VERSION
defining a volume therebetween, at least a portion of the heating element disposed within
the volume." See CX-1352C (Collins Rebuttal WS) Q/A 146.
D. 	Domestic Industry (Technical Prong)
Complainant asserts cfaims 1, 2, 4 and 7 of the ' 130 patent for domestic industry.
See Compl. Br. at 1_06. The JUUL system includes the JUUL device and JUULpods. See
CX-0015C (Collins WS) Q/A 453 . As discussed below, JLI's pod products are made by
a process that meets each limitation of claims 1, 2, and 4 of the ' 13 0 patent. JLI' s JUUL
system, including the JUUL device and JUULpod, practices claims 1, 2, 4, and 7 of the
' 130 patent.
2. 	Independent Claim 1
Asserted claim 1 is recited below:
1. A method of fabricating a cartridge, the method comprising:
[a] forming a storage compartment configured to hold a
vaporizable material, the storage compartment having a first
end and a second end opposite the first end;
[b] attaching a mouthpiece to the storage compartment at the
second end; and
[c] attaching a heater at the first end, the heater comprising:
a heating element configured to heat the vaporizable
material to generate an aerosol for delivery to a user;
[d] a first plate positioned proximate to a first side of the
storage compartment, the first plate coupled to the heating
element and attached proximate to the first end; and
[e] a second plate positioned proximate to a second side of
the storage compartment, the second plate coupled to the
heating element and attached proximate to the frrst end, the
first side opposite the second side, the first plate and the
second plate defining a volume therebetween, at least a
portion of the heating element disposed within the volume.
174

JX-0002 (' 130 Patent), claim 1.24
Claim l(a]
PUBLIC VERSION
The JUULpod practices claim element l[a] because the JUULpod is created using
"[a] method of fabricating a cartridge, the method comprising: forming a storage
compartment configured to hold a vaporizable material, the storage compartment having
a first end and a second end opposite the first end." See CX-0015C (Collins WS) Q/A
458; CX-1193 (JUUL Photo Set 2); CX-0370C (JLI Step 2); CX-0388C (JLI Image). A
person of ordinary skill in the art would have understood that the material in the
JUULpod reservoir is a vaporization liquid that includes nicotine as an ingredient as
shown on JLI's website, as shown on the bottom of CX-0015C (Collins WS) Q/A 459;
CX-1193 (JUUL Photo Set 2); CX-0370C (JLI Step 2); CX-0388C (JLI Image).
Claim l[bl
The JUULpod practices claim element 1 [b] because the JUULpod is formed by
"attaching a mouthpiece to the storage compartment at the second end." See CX-0015C
(Collins WS) Q/A 460; CX-1193 (JUUL Photo Set 2); CX-0370C (JLI Step 2); CX-
0388C (JLI Image).
Claim l(c]
The JUULpod practices claim element 1[c] because the JUULpod is formed by
"attaching a heater at the first end, the heater comprising: a heating element configured to
heat the vaporizable material to generate an aerosol for delivery to a user." See CX-
24 JLI has given a letter designation for each element of the asserted independent claims.
The letter designations used for the elements of this claim is different for technical prong
and validity analysis. The administrative law judge is adopting the different letter
designations as appropriate.
175

PUBLIC VERSION
0015C (Collins WS) Q/A 461 ; CX-1193 (JUUL Photo Set 2); CX-0369C (JLI Step 1) ;
CX-0379C (JLI Step 13). CX-1193 (JUUL Photo Set 2) shows the heater of the
JUULpod attached at the first end, the heater having a heating element, a coil wrapped
around the wick, configured to heat the vaporizable material to generate an aerosol for
delivery to a user, as required by this limitation. CX-1193 (JUUL Photo Set 2), CX-
0369C (JLI Step 1) , and CX-0379C (JLI Step 13) include schematic drawings of the
heater, and language from JLI's website detailing how the vaporizable material is heated.
See CX-0015C (Collins WS) Q/A 462.
As shown in CX-1193 (JUUL Photo Set 2), CX-0369C (JLI Step 1) , and CX-
0379C (JLI Step 13), the heating element is a wire or coil wrapped around the wick. A
coil is a component that transforms electrical energy to μeat for generating an aerosol for
delivery to a user. See CX-0015C (Collins WS) Q/A 463.
The heating element of the JUULpod is configured to generate an aerosol. See id
at Q/A 464. Electrical energy passes from the JUUL device battery through the electrical
contacts to the heating element, which converts the electrical energy to heat. See id 	The
heating element is wrapped around a wick. The heat from the heating element raises the
temperature of the wick and the vaporizable material within the wick to generate a vapor.
The vapor immediately mixes with air near the heating element and an aerosol is formed.
See id 	Therefore, the JUULpod includes a heating element that generates an aerosol as a
result of heating the vaporizable material, which satisfies element 1[c].
Claim l(d)
The JUULpod practices claim element 1[d] because the heater includes "a first
plate positioned proximate to a first side of the storage compartment, the first plate
176

PUBLIC VERSION
coupled to the heating element and attached proximate to the first end; and a second plate
positioned proximate to a second side of the storage compartment, the second plate
coupled to the heating element, and attached proximate to the first end." See CX-00 l 5C
(Collins WS) Q/A 467; CX-1193 (JUUL Photo Set 2); CX-0369C (JLI Step 1); CX-
0379C (JLI Step 13); CX-0384C (JLI Step 25); CX-0385C (JLI Step 26); CX-0386C (JLI
Step 27); CX-0253C (Pod Assembly Overview); CX-0380C (JLI Step 14); CX-0381C
(JLI Step 15); CX-0382C (JLI Step 19); CX-0383C (JLI Step 21). CX-1193 (JUUL
Photo Set 2), CX-0369C (JLI Step 1), and CX-0379C (JLI'Step 13) show that the heater
at the first end of the JUULpod includes a first plate that is positioned proximate to-in
other words, c1ose or near-a first side of the storage compartment, marked with a X.
Similarly, this document shows a second plate is positioned proximate to-in other
words, close or near-a second side of the storage compartment, marked with an 0. This
document also shows that the first plate is coupled to the heating element and attached
proximate to the first end, and the second plate is coupled to the heating element and
attached proximate to the first end. CX-0384C (JLI Step 25), CX-0385C (JLI Step 26),
CX-0386C (JLI Step 27), CX-0253C (Pod Assembly Overview), CX-0380C (JLI Step
14), CX-0381C (JLI Step 15), CX-0382C (JLI Step 19), and CX-0383C (JLI Step 21)
include schematic drawings that provide further support. See CX-0015C (Collins WS)
Q/A 468.
As shown in CX-1193 (JUUL Photo Set 2), [
].
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PUBLIC VERSION
See CX-0015C (Collins WS) Q/A 469.
As shown in CX-1193 (JUUL Photo Set 2), CX-0369C (JLI Step 1), and CX-
0379C (JLI Step 13), this component is a relatively thin piece of material. This
component is also generally smooth and flat, and a thin piece of metal. See CX-0015C
(Collins WS) Q/A 470.
As shown in CX-1193 (JUUL Photo Set 2), CX-0369C (JLI Step 1) , and CX-
0379C (JLI Step 13), a first plate is positioned proximate to (i.e., close or near) a first
side of the storage compartment, the first plate coupled to the heating element and
attached proximate to the first end. And a second plate is positioned proximate to (i.e .,
close or near) a second side of the storage compartment, the second plate coupled to the
heating element and attached proximate to the first end. CX-0384C (JLI Step 25), CX-
0385C (JLI Step 26), CX-0386C (JLI Step 27), CX-0253C (Pod Assembly Overview),
CX-0380C (JLI Step 14), CX-0381C (JLI Step 15), CX-0382C (JLI Step 19), and CX-
0383C (JLI Step 21) include schematic drawings that provide further support. CX-0015C
(Collins WS) Q/A 471.
Claim l(e)
The JUULpod practices claim element 1[e] because the JUULpod includes the
limitation "the first side opposite the second side, the first plate and the second plate
defining a volume therebetween, at least a portion of the heating element disposed within
the volume." See CX-0015C (Collins WS) Q/A 472; CX-1193 (Juul Photo Set 2); CX-
0369C (JLI Step 1) ; CX-0379C (JLI Step 13); CX-0380C (JLI Step 14); CX-0381C (JLI
Step 15); CX-0382C (JLI Step 19); CX-0383C (JLI Step 21); CX-0384C (JLI Step 25);
CX-0385C (JLI Step 26); CX-0386C (JLI Step 27); CX-0253C (Pod Assembly
178

PUBLIC VERSION
Overview). CX-1193 (JUUL Photo Set 2), CX-0369C (JLI Step 1) , and CX-0379C (JLI
Step 13) show that the first side of the storage compartment, marked X, is opposite the
second side, marked O; and the first plate and the second plate define a volume
therebetween, where at least a portion of the heating element disposed within the volume.
The blue line outlines the volume defined between the first plate.and second plate. CX-
0380C (JLI Step 14), CX-0381C (JLI Step 15), CX-0382C (JLI Step 19), CX-0383C (JLI
Step 21 ), CX-0384C (JLI Step 25), CX-0385C (JLI Step 26), CX-0386C (JLI Step 27),
and CX-0253C (Pod Assembly Overview) show schematic drawings that provide further
support. CX-0015C (Collins WS) Q/A 473.
As shown in CX-1193 (JUUL Photo Set 2), CX-0369C (JLI Step 1) , and CX-
0379C (JLI Step 13), the first and second plates bound a space therebetween, and a
portion of the wick is disposed in that space. Also, as shown in CX-1193 (JUUL Photo
Set 2), CX-0369C (JLI Step 1) , and CX-0379C (JLI Step 13), the first and second plates
are parallel and are facing each other. CX-0380C (JLI Step 14), CX-0381C (JLI Step
15), CX-0382C (JLI Step 19), CX-0383C (JLI Step 21), CX-0384C (JLI Step 25), CX-
0385C (JLI Step 26), CX-0386C (JLI Step 27), and CX-0253C (Pod Assembly
Overview) show schematic drawings that further support this conclusion. CX-0015C
(Collins WS) Q/A 474. The JUULpod is made by a method that meets every limitation
of claim 1. See id. atQ/A475 .
3. 	Dependent Claim 2
Asserted claim 2 is recited below:
2. The method of claim 1, wherein the mouthpiece is attached at
the second end by a snap fit coupling with the storage
compartment.
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PUBLIC VERSION
JX-0002 (' 130 Patent), claim 2.
The JUULpod practices claim 2 because the JUULpod meets the limitation
"wherein the mouthpiece is attached at the second end by a snap fit coupling with the
storage compartment." See also CX-1193 (JUUL Photo Set 2); CX-0371C (JLI Step 4);
CX-0372C (JLI Step 5); CX-0373C (JLI Product Step 6); CX-0374C (JLI Step 7); CX-
0375C (JLI Step 8); CX-0376C (JLI Product Step 9). In particular, CX-1193 (JUUL
Photo Set 2), CX-0371C (JLI Step 4), CX-0372C (JLI Step 5), CX-0373C (JLI Product
Step 6), CX-0374C (JLI Step 7), CX-0375C (JLI Step 8), CX-0376C (JLI Product Step 9)
show that the mouthpiece couples to the storage compartment via a snap-fit coupling
between protrusions on the lateral sides of the storage compartment, as identified in the
image on the left, and openings on the lateral sides of the mouthpiece, as identified in the
image on the right. CX-0015C (Collins WS) Q/A 476.
To secure the mouthpiece to the storage compartment, the JJ}Outhpiece is inserted
over the second end of the storage compartment, and pressed towards the first end. As
the mouthpiece slides over the protrusions, the protrusions initially deflect the
mouthpiece, causing the mouthpiece to flex outwards. When the protrusions align with
the mouthpiece openings, the deflected mouthpiece elastically returns to its original
position, and the protrusions engage with the mouthpiece, thereby effecting the snap-fit
coupling. The engagement between the storage compartment protrusions and the
mouthpiece openings secures the mouthpiece to the storage compartment. Thus, the
JUULpod meets claim 2. See id at QIA 4 77.
The JUULpod also practices claim 2 of the ' 130 patent under the doctrine of
equivalents to the extent that any differences may exist between the JUULpod and the
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PUBLIC VERSION
features disclosed in claim 2 of the ' 130 patent. A person of ordinary skill in the art
would have understood these differences to be insubstantial. See id. at Q/A 478. The
JUULpod mouthpiece attaches to the storage compartment with a snap-fit coupling. In
other words, these components perform substantially the same function-in substantially
the same way, to achieve substantially the same result-to secure the mouthpiece to the
flattened body- 	as in claim 2. See id. 	Thus, this claim is also met under the doctrine of
equivalents. The.JUULpod is made by a method that meets. every limitation of claim 2,
as well as claim 1 from which claim 2 depends, either literally or under the doctrine of
equivalents. See id. at Q/A 4 79.
4. 	Dependent Claim 4
Asserted claim 4 is recited below:
4. The method of claim 1, wherein the first plate is attached to a
first flexible tab having a first contact surface outside of the heater,
and wherein the second plate is attached to a second flexible tab
having a second contact surface outside of the heater.
JX-0002 (' 130 Patent), claim 4.
The JUULpod practices claim 4 because the JUULpod is formed "wherein the
first plate is attached to a first flexible tab having a first contact surface outside of the
heater, and wherein the second plate is attached to a second flexible tab having a second
contact surface outside of the heater.1' See CX-0015C (Collins WS) Q/A 480; CX-1193
(JUUL Photo Set 2); CX-0369C (JLI Step 1); CX-0379C (JLI Step 13); CX-0380C (JLI
Step 14); CX-0381C (JLI Step 15); CX-0382C (JLI Step 19); CX-0383C (JLI Step 21);
CX-0384C (JLI Step 25); CX-0385C (JLI Step 26); CX-0386C (JLI Step 27); CX-0387C
(JLI Step 28); CX-0253C (Pod Assembly Overview). CX-1193 (JUUL Photo Set 2)
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PUBLIC VERSION
shows the first plate, outlined in green, is attached to a first flexible tab having a first
contact surface, outlined in blu~, and the second plate, also outlined in green, is attached
to a second flexible tab having a second contact surface, also outlined in blue. The first
flexible tab having a first contact surface and the second flexible tab having a second
contact surface are outside the heater. CX-0369C (JLI Step 1) , CX-0379C (JLI Step 13),
CX-0380C (JLI Step 14), CX-0381C (JLI Step 15), CX-0382C (JLI Step 19), CX-0383C
(JLI Step 21), CX-0384C (JLI Step 25), CX-0385C (JLI Step 26), CX-0386C (JLI Step
27), CX-0387C (JLI Step 28), and CX-0253C (Pod Assembly Overview) include
schematic drawings that provide further support. CX-0015C (Collins WS) Q/A 481.
As shown in the images from CX-1193 (JUUL Photo Set 2), the cartridge
includes a "flexible tab." A person of ordinary skill in the art would understand that the
contact tab shown above is made of a material that can flex. For example, the tab can be
folded. The tab projects from the plate and extends outside the cartridge body. The tab is
also a projecting device supple enough to bend freely or repeatedly without breaking.
See CX-0015C (Collins WS) Q/A 482. As shown in CX-0369C (JLI Step 1) , CX-0379C
(JLI Step 13), CX-0380C (JIJ Step 14), CX-0381C (JLI Step 15), CX-0382C (JLI Step
19), and CX-0383C (JLI Step 21), the JUULpod is made by a method that meets every
limitation of claim 4, as well as claim 1 from which claim 4 depends. See CX-0015C
(Collins WS) Q/A 483.
5. 	Dependent Claim 7
Asserted claim 7 is recited below:
7. The method of claim 1, wherein the cartridge further comprises
the vaporizable material within the storage compartment, and
wherein the vaporizable material comprises a nicotine formulation.
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PUBLIC VERSION
JX-0002 (' 130 Patent), claim 7.
The JUULpod practices claim 7 because t4e JUULpod is formed "wherein the
cartridge further comprises the vaporizable material within the storage compartment, and
wherein the vaporizable material comprises a nicotine formula~ion. " See CX-0015C
(Collins WS) Q/A 484; CX-1193 (JUUL Photo Set 2). CX-1193 (JUUL Photo Set 2)
shows that the JUULpod is created using the claimed method of fabricating a cartridge.
It also shows that the vaporizable material within the storage compartment has a nicotine
formulation. This document also includes a copy of a photo taken of the JUULpod
packaging, which identifies nicotine as an ingredient, and as shown on JLI' s website,
which describes the pod as containing liquid materials for vaping. CX-0015C (Collins
WS) Q/A485 .
A person of ordinary skill in the art, based on the information provided on the
JUULpod' s packaging and JLI' s website, would have reasonably understood that the
liquid in the JUULpod is a vaporizable material that has a nicotine formulation. See id at
Q/A 486. The JUULpod is made by a method that meets every limitation of claim 7, as
well as claim 1 from which claim 4 depends. See CX-0015C (Collins WS) Q/A 487.
VII. U.S. Patent No. 10,104,915
United States Patent No. 10 ,104,915 ("the ' 915 patent"), entitled "Securely
attaching cartridges for vaporizer devices," issued on October 23 , 2018. JX-0004 (' 915
Patent). The ' 915 patent issued from Application No. 15/815,666, filed on November 16 , J
2017. See id The ' 915 patent application is a continuation of, and claims priority to,
Application No. 15/430,357, filed on February 10, 2017, which is a continuation-in-part
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PUBLIC VERSION
of other patent applications. The ' 915 patent also claims priority to Provisional
Application No. 62/294,281 , filed on February 11 , 2016. The ' 915 patent relates to
"apparatuses, including systems and devices, for vaporizing material to form an inhalable
aerosol. Specifically, these apparatuses may include vaporizers." JX-0004, 2:64-67. The
' 915 patent has a total of 32 claims.
Complainant asserts claims 1, 6 and 21 of the ' 915 patent. See Compl. Br. at 14.
As discussed below, the evidence shows that (1) the asserted claims are infringed by the
accused products; (2) complainants have satisfied the technical prong of the domestic
industry requirement; and (3) the asserted claims are not invalid.
Asserted claims 1, 6 and 21 are recited below:
1. A cartridge comprising:
[a] a storage compartment configured to hold a vaporizable
material, the storage compartment having a non-circular cross
section, the storage compartment having a top end and a
bottom end opposite the top end along a first dimension,
wherein the non-circular cross section iRcludes two short sides
and two long sides, the two short sides being shorter than the
two long sides to result in the non-circular cross section, and
wherein the storage compartment comprises a plastic material;
[b] an aerosol outlet disposed proximate to the top end of the
storage compartment;
[c] a heater chamber disposed proximate to the bottom end of
the storage compartment, the heater chainber comprising a
heating element configured to aerosolize the vaporizable
material, when the vaporizable material is present, to form an
aerosol;
[d] a first electrical contact and a second electrical contact each
configured and disposed to couple and complete an electrical
circuit with a third electrical contact and a fourth electrical
contact in a receptacle of a vaporizer device body, the electrical
circuit configured to provide power to the heating element
when the vaporizer device body is present;
184

PUBLIC VERSION
[e] an aerosol channel within the storage compartment, the
aerosol channel extending from the heater chamber to the
aerosol outlet, the aerosol channel configured so that the
aerosol, when the aerosol is present, is inhalable through the
aerosol channel;
[f] a first exterior wall extending between the top end and the
bottom end;
a second exterior wall extending between the top end and the
bottom end, wherein the first exterior wall and the second
exterior wall are respectively intersected by the two short sides
of the non-circular cross section;
[g] a first locking gap disposed within six millimeters from the
bottom end of the storage compartment and formed within the
first exterior wall, the first locking gap configured to engage
with a frrst locking detent within the receptacle of the vaporizer
device body when the vaporizer device body is present,
wherein a height of a first interior wall of the vaporizer device
body comprising the first locking detent is at least thirteen
millimeters; and
a second locking gap disposed within six millimeters from the
bottom end of the storage compartment and formed within the
second exterior wall, the second locking gap configured to
engage with a second locking detent within the receptacle of
the vaporizer device body when the vaporizer device body is
present, wherein a height of a second interior wall of the
vaporizer device body comprising the second locking detent is
at least thirteen millimeters.
4. The cartridge of claim 1, further comprising:
a mouthpiece comprising the aerosol outlet, wherein the frrst
exterior wall has a frrst point between the bottom end of the
storage compartment and the top end of the storage
compartment, wherein the second exterior wall has a second
point between the bottom end of the storage compartment and
the top end of the storage compartment, wherein the
mouthpiece terminates in a distal edge, and wherein the distal
edge of the mouthpiece is disposed at the first point and the
second point.
6. The cartridge of claim 4, further comprising:
a first mouthpiece detent on the first exterior wall proximate to
the first point; and
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PUBLIC VERSION
a second mouthpiece detent on the second exterior wall
proximate to the second point, wherein the mouthpiece is
secured to the storage compartment by the first detent and the
second detent.
21 . [p] An apparatus comprising:
[a] a vaporizer device body comprising:
a receptacle;
a third electrical contact and a fourth electrical contact
disposed within the receptacle;
a first locking detent and a second locking detent within the
receptacle; and
a first interior wall and a second interior wall within the
receptacle, wherein each of the first interior wall and the
second interior wall are at least thirteen millimeters in
height, wherein the first interior wall and the second
interior wall respectively comprise the first locking detent
and the second locking detent; and
[b] a cartridge having a bottom end and a top end opposite the
bottom end along a first dimension, the cartridge comprising:
a storage compartment configured to hold a vaporizable
material, the storage compartment having a non-circular
cross section, wherein the non'."circular cross section
includes two short sides and two long sides, the two short
sides being shorter than the two long sides to result in the
non-circular cross section, and wherein the storage
compartment comprises a plastic material;
[c] an aerosol outlet at the top end of the cartridge;
[d] a heating element proximate to the bottom end of the
cartridge, the heating element configured to aerosolize the
vaporizable material to form an aerosol for delivery
through the aerosol outlet;
[e] a first electrical contact and a second electrical contact
configured and disposed to couple and complete an
electrical circuit with the third electrical contact and the
fourth electrical contact, the electrical circuit configured to
provide power to the heating element;
[f] a frrst exterior wall and a second exterior wall extending
between the top end and the bottom end, wherein the first
exterior wall and the second exterior wall are respectively
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PUBLIC VERSION
intersected by the two short sides of the non-circular cross
section;
[g] a first locking gap disposed within six millimeters from
the bottom end of the storage compartment and formed
within the first exterior wall, the first locking gap
configured to engage with the first locking detent; and
a second locking gap disposed within six millimeters from
the bottom end of the storage compartment and formed
within the second exterior wall, the second locking gap
configured to engage with the second locking detent.
JX-0004 ('915 Patent), claims 1, 4, 6, and 21.
A. 	Claim Construction 25
1. 	A Person of Ordinary Skill in the Art
Complainant argues:
A person of ordinary skill in the art ("POSA") is one who is
presumed to be aware of all pertinent art, thinks along conventional
wisdom in the art, and is a person of ordinary creativity. A POSA in the
context of the asserted patents would have had (1) a B.S. in mechanical
engineering, electrical engineering, or an equivalent degree and (2) at least
one year of experience designing consumer products. CX-0015C (Collins
WS) Q/A 33 ; CX-0016C (Alarcon WS) Q/A 22.
Ziip' s expert, Mr. Flolid has proposed that a POSA would have at
least a bachelor' s degree in mechanical engineering, electrical
engineering, or an equivalent degree. RX-0113 (Flolid WS) Q/A 19.
Alternatively, Mr. Flolid opined that a POSA could also have had at least
two years' experience designing, developing, or testing electronic
cigarettes or related electromechanical devices, such as electromechanical
devices configured to heat liquid and generate an aerosol. Id. at Q/A 20.
25 Respondent Eonsmoke did not discuss any of the disputed claim terms on the merits in
its posthearing briefs. See Joint Outline - Eonsmoke and Joint Reply Outline -
Eonsmoke. Indeed, Eonsmoke' s only statement concerning claim construction is the
following:
Ziip applies the agreed upon constructions for any terms that had
agreed upon constructions, as set forth in the Joint Claim Construction
Chart. Otherwise, Ziip applies the plain and ordinary meaning of the term.
Resp. Br. at 3-4.
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PUBLIC VERSION
Mr. Flolid further opines that his definition is only "approximate" and that
a skilled artisan could have a higher level of education to make up for less
experience or a higher level of training or skill to make up for less
education. Id. at QIA 19. Mr. Flo lid's definition of a POSA is vague and
incorrect. CX-1353C (Alarcon Rebuttal WS) Q/A 41 -42; CX-0015C
(Collins WS) Q/A 34. Regardless, the differences between JLI's proposed ·
qualifications for a POSA and those proposed by Respondents would not
change JLI's infringement or validity analysis. CX-0015C (Collins WS)
Q/A 35; CX-1353C (Alarcon Rebuttal WS) Q/A 42.
Compl. Br. at 18-19 (citations omitted).
Respondent argues:
The key decision is the definition of a POSA. Both parties agree
that a POSA would have at least a degree in mechanical or electrical
engineering or a similar degree. And both agree that this POSA would
have some design experience with products. Ziip proposes that this
experience would be at least two years with electronic cigarettes or related
electromechanical devices because this is the subject matter of the patents
at issue.
Ziip' s definition is a better one:
A person of ordinary skill in this art would have (1) at least a B.S.
in mechanical engineering, electrical engineering, or an equivalent
degree and/or (2) at least two years' experience designing,
developing, or testing electronic cigarettes or related
electromechanical devices, such as electromechanical devices
configured to heat liquid and generate an aerosol. This description
is approximate, and a higher level of training or skill might make
up for less education, and vice-versa.
(RX-0113 .0005-6, Q/A 18-20).
Juul has proposed a far broader definition - one year designing
consumer products - because Juul wants its POSA to be as ignorant as
possible so as not to see the connections that Ziip claims are obvious. But
Juul' s definition is deficient, as its expert, Mr.. Ramon Alarcon, essentially
admitted when he noted that not every consumer product would be
relevant. (Hearing Tr., at 422:15-423:16).
Ziip' s definition of a POSA as having at least two years' of
experience with devices like an electronic cigarette makes more sense as
this is the type of person would look to the prior art to find solutions to the
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PUBLIC VERSION
known problems. And, as the United States Supreme Court has held, it is
the solving of known problems that is a key determinant of obviousness.
Resp. Br . at 2-3.
The Staff argues:
JLI contends that for all asserted patents, a person of ordinary skill
in the art would have had (1) a B.S. in mechanical engineering, electrical
engineering, or an equivalent degree and (2) at least one year of
experience designing consumer products." CPreHBr. at 15. Ziip,
Eonsmoke and V4L did not present a contention in their respective pre-
hearing briefs regarding the level of ordinary skill in the art for any of the
asserted patents. Therefore, they waived any such contentions. See
Ground Rule 7.c. Nonetheless, Ziip and Eonsmoke's expert, Mr. Flolid,
testified that he agreed with Ziip's apparent contention "that a person of
ordinary skill in the art would have at least (1) a B.S. degree in mechanical
engineering, electrical engineering, or an equivalent degree and/or (2) at
least two years of experience designing, developing, or testing electronic
cigarettes or related electromechanical devices, such as electromechanical
devices configured to heat liquid and generate an aerosol. This description
is approximate, and a higher level of training or skill might make up for
less education, and vice-versa." RX-0113 at Q19.
To the extent the ALJ does not agree that Respondents waived
their contentions as to one of ordinary skill in the art, the Staff agrees with
JLI' s contention, favoring the lesser experience requirement. The Staff,
however, is of the view that the difference between the private parties'
proposals with respect to the level of ordinary skill does not affect the
infringement or invalidity issues in this Investigation.
Staff Br. at 19-20 (citations omitted).
As an initial matter, Eonsmoke did not discuss the level of ordinary skill in the art
for any of the asserted patents in its pre-hearing brief. Therefore, it waived any such
contention. See Ground Rule 7.c.
In any event, JLI' s proposed level of ordinary skill is more persuasive in the
context of the '915 patent. JLI's proposed level requires (1) a B.S. in mechanical
engineering, electrical engineering, or an equivalent degree, and (2) at least one year of
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PUBLIC VERSION
experience designing consumer products. Thus, the administrative law judge finds that a
person of ordinary skill in the art with respect to the ' 915 patent is a person who has a
B.S. in mechanical engineering, electrical engineering, or an equivalent degree, and at
least one to two years of experience designing consumer products.
2. 	Claim Construction
Below is a chart showing the parties' proposed claim constructions.
'915 Claim Claim(s) Complainant's 	Eonsmoke's
Term 	Construction 	Construction
"a channel, divot, pit,
"locking 1, 21 opening, or hole that abandoned
gap" 	can engage with a
detent"
"locking 1, 21 , 22 "a projection that can abandoned
detent" 	engage a locking gap"
Plain meaning, which
"two short is: "two sides each
sides" 1, 21 	with a smaller 	abandoned
dimension than each of
the two long sides"
Plain meaning, which
"two long is: "two long sides
sides" 1, 21 	each with a larger 	abandoned
dimension than each of
the two short sides"
Plain meaning, which
1s :
"heating "a component that
element 1, 21 	transforms electrical 	abandoned
[configured energy to heat"
to]"
Not means plus
function
Compl. Br. at 136-39; Resp. Br . at 3-4; Staff Br . at 71-77.
190
Staff's
Construction
Same asJLI
Same asJLI
Same asJLI
SameasJLI
Plain meaning,
which is:
"a component
that transforms
energy to heat"

PUBLIC VERSION
Eonsmoke did not present any claim construction analyses in its pre-hearing brief,
and thus waived any such contentions. See Ground Rule 7 .c.
a. "locking gap" and "locking detent"
JLI argues and the Staff concurs that the claim term "locking gap" should be
construed to mean "a channel, divot, pit, opening, or hole that can engage with a detent,"
and the related term "locking detent" should likewise be construed as "a projection that
can engage a locking gap." See Compl. Br. at 137-38. These complementary
constructions reflect the fact that these terms recite complementary structures that engage
one another.
These proposed constructions are supported by the specification. JX-0004 (' 915
Patent), 4:24-37 ("The locking gap is generally a gap that is surrounded at least on the
upper and lower. . . sides by the lateral wall to allow the detent on the vaporizer to engage
therewith."), id., 41 :17-33 ("the locking gap may be a divot, pit, opening, or hole"), id ,
42:49-58 ("the pair of locking gaps ... which engage with a detent projecting into the
cartridge"), id , FIGS. 24A, 25A, 28C, 28D (showing locking gaps). The specification
explains that the locking detents engage the locking gaps by fitting into them. Id , 4:10-
13 ("detents extending from a major surface"), id , 4:28-31 ("The locking gap is generally
a gap ... to allow the detent on the vaporizer to engage therewith"), id., 41 :44-52 ("two
detents that may mate with the locking gaps") (locking detent). The figures show the
locking detents fitting into the locking gaps. Id. , FIGS. 27B, 28A-28D. The Staff agrees
with JLI. See Staff Br. at 75-76.
The administrative law judge has determined that (1) the claim term "locking
gap" should be construed to mean "a channel, divot, pit, opening, or hole that can engage
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PUBLIC VERSION
with a detent," and (2) the claim term "locking detent" should be construed to mean "a
projection that can engage a locking gap."
b. "two short sides" and "two long sides"
JLI argues and the Staff concurs that these terms have plain meanings, which is
"two sides each with a smaller [or larger] dimension than other sides." See Compl. Br. at
138-39. The terms appear in the context describing a rectangular-shaped object. See JX-
0004 (' 915 Patent), 3:37-41 , 3:66-4:3. Rectangles are widely understood to have two
pairs of sides, one pair longer than the other pair. The figures, accordingly, show various
embodiments of bodies that have two short sides and two long sides. Id , FIGS. 5, 6A-
6D, 7C, 9A-9L, 13 , 26A, 26B, 2 7A, 27B, 29A-29D. The Staff agrees with JLI. See Staff
Br. at 76.
Althogh the table above shows that JLI and the Staff propose the claim term "two
long sides" to mean "two long sides each with a larger dimension than each of the two
short sides," the administrative law judge believes that to be 'in error. Based on the
argument in JLI' s brief, it appears that JLI and the Staff propose that the term "two long
sides" should be construed as "two sides each with a larger dimension than each of the
two short sides."
Thus, the administrative law judge has determined that (1) the claim term ''two
short sides" should be given its plain and ordinary meaning, i. e. , "two sides each with a
smaller dimension than each of the two long sides ," and (2) the claim term "two long
sides" should be given its plain and ordinary meaning, i.e., "two sides each with a larger
dimension than each of the two short sides."
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PUBLIC VERSION
c. "heating element"
JLI argues that a heating element is "a component that transforms electrical
energy to heat," as discussed above for the ' 669 and ' 130 patents. See Compl. Br. at 139.
The ' 915 patent specification is generally consistent with this construction. See JX-0004
(' 915 Patent), 13 :41-48 ("[T]o operate the heating element, the energy may be derived
from a battery in electrical communication with the heating element.") Id., 13:63-14:1 ,
FIGS. 7B, 7C, 9A-9L, 24B, 26A, 26B, 28C, 28D.
However, as argued by the Staff, in addition to the citations to the specification
provided by JLI to support its construction, the ' 915 patent specification also discloses
that instead of electrical energy, the heating element may "alternatively [use] a chemical
reaction (e.g., combustion or other exothermic reaction) [to] provide energy to the
heating element." See Staff Br. at 76-77 (citing JX-0004 (' 915 Patent), 13:46-49). Thus,
the specification teaches that energy need not be limited to electrical energy.
The administrative law judge has determined that the claim term "heating element
[configured to]" should be construed to mean "a component that transforms energy to
heat."
B. Infringement Analysis of the '915 Patent
JLI asserts claims 1, 6 and 21 of the ' 915 patent. JLI has demonstrated by a
preponderance of the evidence that Eonsmoke ' s accused products infringe the asserted
claims of the ' 915 patent. See Compl. Br. at 139-147; CX-0016C (Alarcon) Q/A 39-261.
Indeed, Eonsmoke did not contest infringement and did not present any non-infringement
arguments in its post-hearing briefs. See Joint Outline - Eonsmoke; Joint Reply Outline
- Eonsmoke.
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PUBLIC VERSION
JLI asserts claims 1, 6 and 21 of the ' 915 patent. JLI has demonstrated by a
preponderance of the evidence that Eonsmoke' s accused products infringe the asserted
claims of the ' 915 patent. See Compl. Br. at 139-147; CX-0016C (Alarcon) Q/A 39-261.
Indeed, Eonsmoke did not contest infringement and did not present any non-infringement
arguments in its post-hearing briefs. See Joint Outline - Eonsmoke; Joint Reply Outline
- Eonsmoke.
Nonetheless, the administrative law judge adopts JLI's infringement analysis with
respect to Eonsmoke and provides the following infringement analysis of the ' 915 patent.
1. 	Importation and Accused Products
On August 5, 2019, the administrative law judge issued an initial determination
granting complainant' s motion for summary determination with respect to importation.
See Order No. 35 (Aug. 5, 2019) at 4-5, aff'd in part , Commission Determination to
Review in Part an Initial Determination Granting in Part Complainant' s Motion for
Summary Determination of Importation, Infringement, and Domestic Industry (Sept. 4,
2019) (Commission determining not to review importation).
Eonsmoke is based in Clifton, New Jersey, and is an importer, distributor, and
seller of ENDS devices and pods, including the Eonsmoke devices and pods
manufactured by Ziip. The accused products with respect to Eonsmoke include the
Eonsmoke device, the Eonsmoke v2.0 device, Eonsmoke (Eon) pod, and the 4X pod
(individually and collectively, "Eonsmoke accused products"). See Compl. Br. at 10
(citing CX-0958C (Eonsmoke Invoices 13); CX-0858 (Eonsmoke's Supp. Responses to
JLI's RFAs)).
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JLI provided the following table showing the Eonsmoke accused products that are
alleged to infringe the asserted patent claims:
- ~-- -- 	~- 	a,-·p
Accused Product 	'669 	'915 	'568 	'130
Eonsmoke Resl!ondent 	1, 2, 13 	1, 6, 21 	12 , 17 , 	1, 2, 4
Eonsmoke device 20
Eonsmoke v2 device (stipulated
representative)
E onsmoke pods (stipulated representative)
4Xpods
Compl. Br. at 220.
Eonsmoke' s stipulations concerning representativeness discussed above for the
' 669 patent apply equally to ' 915 patent. See CX-0016C (Alarcon WS) Q/A 304-306,
319-320. JLI's expert, Dr. Collins, conducted a thorough visual inspection and
examination of the representative Eonsmoke pods and 4X pods.
a. 	Independent Claim 1
Asserted claim 1 is recited below:
1. A cartridge comprising:
[a] a storage compartment configured to hold a vaporizable
material, the storage compartment having a non-circular cross
section, the storage compartment having a top end and a
bottom end opposite the top end along a first dimension,
wherein the non-circular cross section includes two short sides
and two long sides, the two short sides being shorter than the
two long sides to result in the non-circular cross section, and
wherein the storage compartment comprises a plastic material;
[b] an aerosol outlet disposed proximate to the top end of the
storage compartment;
[c] a heater chamber disposed proximate to the bottom end of
the storage compartment, the heater chamber comprising a
heating element configured to aerosolize the vaporizable
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PUBLIC VERSION
material, when the vaporizable material is present, to form an
aerosol;
[d] a first electrical contact and a second electrical contact each
configured and disposed to couple and complete an electrical
circuit with a third electrical contact and a fourth electrical
contact in a receptacle of a vaporizer device body, the electrical
circuit configured to provide power to the heating element
when the vaporizer device body is present;
[e] an aerosol channel within the storage compartment, the
aerosol channel extending from the heater chamber to the
aerosol outlet, the aerosol channel configured so that the
aerosol, when the aerosol is present, is inhalable through the
aerosol channel;
[f] a first exterior wall extending between the top end and the
bottom end;
a second exterior wall extending between the top end and the
bottom end, wherein .the first exterior wall and the second
exterior wall are respectively intersected by the two short sides
of the non-circular cross section;
[g] a first locking gap disposed within six millimeters from the
bottom end of the storage compartment and formed within the
first exterior wall, the first locking gap configured to engage
with a first locking detent within the receptacle of the vaporizer
device body when the vaporizer device body is present,
wherein a height of a first interior wall of the vaporizer device
body comprising the first locking detent is at least thirteen
millimeters; and
a second locking gap disposed within six millimeters from the
bottom end of the storage compartment and formed within the
second exterior wall, the second locking gap configured to
engage with a second locking detent within the receptacle of
the vaporizer device body when the vaporizer device body is
present, wherein a height of a second interior wall of the
vaporizer device body comprising the second locking detent is
at least thirteen millimeters.
JX-0004 (' 915 Patent), claim 1.
Claim Up)
The accused products practice claim element 1[p] because each pod is a cartridge.
See CX-0016C (Alarcon WS) Q/A 397 (listing underlying evidence), Q/A 398-399
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PUBLIC VERSION
(discussing evidence).
Claim l[a)
The accused products practice claim element 1[a] because the pod has a storage
compartment with a top end and a bottom end opposite the top end along a first
dimension. See CX-0016C (Alarcon WS) Q/A 406 (Eonsmoke). The storage
compartment has a non-circular cross-section with two long and two short sides,
highlighted in green in the images. The storage compartment is made of plastic. See CX-
0016C (Alarcon WS) at Q/A 411.
Claim l[b)
All accused products practice claim element 1[b] because the pod has an aerosol
outlet near or proximate to the top end of the storage compartment. See id at QIA 414
(Eonsmoke ).
Claim l(c)
All accused products practice claim element 1[c] because the pod has a heater
chamber near the bottom end, comprised of a heating element in the form of a coil. CX-
0016C (Alarcon WS) Q/A 421 (Eonsmoke). The heating elements are configured to
aerosolize the vaporizable material to form an aerosol. See CX-0016C (Alarcon WS)
Q/A 426-427. Electrical energy passes from a compatible device battery through the
electrical contacts to the heating element, which converts the electrical energy to heat.
The heating element is wrapped around a wick. See id. The heat from the heating
element raises the temperature of the wick and the vaporizable material within the wick
to generate a vapor. The vapor immediately disperses in air at the heating element and an
aerosol is immediately formed. See id
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PUBLIC VERSION
Claim l[d)
The accused products practice claim element 1[d] because the pod has first and
second electrical contacts that are located to couple with a third and fourth electrical
contact on a compatible vaporizer device. See id at Q/A 432 (Eonsmoke). When the
pod is inserted into the receptacle of a device, an electrical circuit is completed, which
provides power to the heating element. See id
Claim l(e)
The accused products practice claim element 1[e] because the pod has an aerosol
channel inside the storage compartment that extends from the heater chamber to the
aerosol outlet and through which aerosol travels when a user inhales. See CX-0016C
(Alarcon WS) Q/A 439 (Eonsmoke).
Claim l[fl
The accused products practice claim element 1[f] because the pod has a frrst and
second exterior wall that extend between the top and bottom ends and are intersected by
the two short sides of the non-circular cross-section. See CX-0016C (Alarcon WS) Q/A
446 (Eonsmoke).
Claim l(g)
The accused products practice claim element 1 [g] because the pod has a frrst and
second locking gap formed within the first and second exterior walls, respectively. See
CX-0016C (Alarcon WS) Q/A 453 (Eonsmoke). These locking gaps are configured such
that they will engage with a frrst and second locking detent of a compatible device when
the cartridge is inserted into the receptacle of the device. See id 	As can be seen in the
photographs, the locking gaps are disposed within 6 millimeters of the bottom end of the
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PUBLIC VERSION
storage compartment. The height of the first and second interior walls of the receptacle is
at least 13 millimeters. See id. Mr. Alarcon measured each product from approximately
the bottom surface of the cartridge, which also is the bottom end of the storage
compartment for these particular products, and found the 6 mm limitation to be satisfied.
See CX-0016C (Alarcon WS) Q/A 458. There was no difference, within the degree of
precision required by the claim, between the values measured on the calipers and the
values observed using the ruler. See id.
b. 	Dependent Claim 6
Asserted claim 6 is recited below:
4. The cartridge of claim 1, further comprising:
a mouthpiece comprising the aerosol outlet, wherein the frrst
exterior wall has a first point between the bottom end of the
storage compartment and the top end of the storage
compartment, wherein the second exterior wall has a second
point between the bottom end of the storage compartment and
the top end of the storage compartment, wherein the
mouthpiece terminates in a distal edge, and wherein the distal
edge of the mouthpiece is disposed at the first point and the
second point.
6. The cartridge of claim 4, further comprising:
a first mouthpiece detent on the first exterior wall proximate to
the first point; and
a second mouthpiece detent on the second exterior wall
proximate to the second point, wherein the mouthpiece is
secured to the storage compartment by the frrst detent and the
second detent.
JX-0004 (' 915 Patent), claims 4, 6.
Claim 6 depends from claim 4, which itself depends from claim 1. The accused
products practice claim 4 because each pod includes a mouthpiece that includes an
opening forming the aerosol outlet. See CX-0016C (Alarcon WS) Q/A 464 (Eonsmoke).
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PUBLIC VERSION
Additionally, the pod has first and second points located on the first and second exterior
walls, respectively, and between the bottom and top ends of the storage compartment.
The mouthpiece terminates in a distal edge at the first and second points. See id
The accused products practice the.additional limitation of claim 6 because the
mouthpiece of the pod has a first and second mouthpiece detent on the first and second
exterior walls that are proximate to the first and seGond points, respectively. See CX-
0016C (Alarcon WS) Q/A 471 (Eonsmoke). The detents secure the mouthpiece to the
storage compartment. See id
c. 	Independent Claim 21
Asserted claim 21 is recited below:
21 . [p] An apparatus comprising:
[a] a vaporizer device body comprising:
a receptacle;
a third electrical contact and a fourth electrical contact
disposed within the receptacle;
a first locking detent and a second locking detent within the
receptacle; and
a first interior wall and a second interior wall within the
receptacle, wherein each of the first interior wall and the
second interior wall are at least thirte.en millimeters in
height, wherein the first interior wall and the second
interior wall respectively comprise the first locking detent
and the second locking detent; and
[b] a cartridge having a bottom end and a top end opposite the
bottom end along a first dimension, the cartridge comprising:
a storage compartment configured to hold a vaporizable
material, the storage compartment having a non-circular
cross section, wherein the non-circular cross section
includes two short sides and two long sides, the two short
sides being shorter than the two long sides to result in the
non-circular cross section, and wherein the storage
compartment comprises a plastic material;
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PUBLIC VERSION
[c] an aerosol outlet at the top end of the cartridge;
[d] a heating element proximate to the bottom end of the
cartridge, the heating element configured to aerosolize the
vaporizable material to form an aerosol for delivery
through the aerosol outlet;
[e] a first electrical contact and a second electrical contact
configured and disposed to couple and complete an
electrical circuit with the third electrical contact and the
fourth electrical contact, the electrical circuit configured to
provide power to the heating element;
[f] a first exterior wall and a second exterior wall extending
between the top end and the bottom end, wherein the frrst
exterior wall and the second exterior wall are respectively
intersected by the two short sides of the non-circular cross
section;
[g] a frrst locking gap disposed within six millimeters from
the bottom end of the storage compartment and formed
within the first exterior wall, the frrst locking gap
configured to engage with the first locking detent; and
a second locking gap disposed within six millimeters from
the bottom end of the storage compartment and formed
within the second exterior wall, the second locking gap
configured to engage with the second locking detent.
JX-0004 (' 915 Patent), claim 21.
Claim 21 is an apparatus claim requiring a vaporizer device and a cartridge. The
combination of a device and a cartridge directly infringes claim 21. However, the
manufacture, import, or sale of either the accused cartridge or the accused device alone
indirectly infringes because the only purpose and intended use of the accused devices and
cartridges are to be combined with each other in an infringing manner. See CX-0016C
(Alarcon WS) Q/A 478.
The Eonsmoke pods when combined with an infringing vaporizer device, such as
the JUUL or Eonsmoke v2.0, directly infringe claim 21 of the ' 915 patent. See CX-
0016C (Alarcon WS) 323 (Eonsmoke). The manufacture, sale, or import of these pods
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PUBLIC VERSION
and devices separately induce and contributorily infringe claim 21 of the ' 915 patent, as
discussed in more detail below. See id. at Q/A 308, Q/A 323 .
Direct Infringement
Eonsmoke accused products practice claim element 21 [p] because the pod, when
combined with a device, is an apparatus. See CX-0016C (Alarcon WS) Q/A 479-485.
The accused products practice claim element 21 [a] because the device comprises
a vaporizer device that includes a receptacle and within the receptacle are a third and
fourth electrical contact, a first and second locl9-ng detent, and a first and second interior
wall. See CX-0016C (Alarcon WS) Q/A 488, 492. The interior walls comprise the
locking detents and are at least 13 millimeters in height, which is represented in the
images by a blue line on the cartridge, indicating the portion of the cartridge covered by
the interior walls when inserted into the receptacle, and thus the height of the interior
walls. See id.
Indirect Infringement
Under an indirect infringement analysis for claim 21 , end users are the direct
infringers. Eonsmoke has testified that it sells the accused products to end users. See
CX-0018C (Tolmach Dep. Designations (Apr. 4, 2019)), 128, 130, 134; CX-0026C
(Grishayev Dep. Designations (Apr. 17 , 2019)) 210.
The only purpose of the cartridges and devices is to be combined into an ENDS
apparatus that meets every element of claim 21. See CX-0016C (Alarcon WS) Q/A 309.
An act of direct infringement of claim 21 occurs when a user combines an accused
cartridge with an accused device, as intended by Eonsmoke. See id. at Q/A 324, 337,
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PUBLIC VERSION
355, 386.
Eonsmoke has admitted notice of JLI' s patents in 2017. See CX-13 04C (4 X Pods
Blue Blackberry Packaging); CX-1302C (Eonsmoke Pods Ad); CX-0407 (Eonsmoke
v2.0 Juul Compatible Screenshot); CX-0018C (Tolmach Dep. Designations (Apr. 4,
2019)) 58-60, 81-83, 184-186; CX-0170 (Eonsmoke Product & Packaging Images 3);
CX-0026C (Grishayev Dep. Designations (Apr. 17, 2019)) 55-57.
Eonsmoke had notice of JLI' s infringement allegations by October 26, 2018, the
date the complaint was filed. Additionally, JLI virtually marks each of its products with
a website that contains a list of issued patents covering the JUUL system. This website
was updated to include the ' 915 patent by November 20, 2018, thus conferring notice on
Eonsmoke at least as of that date. See CX-0016C (Alarcon WS) Q/A 312, 326, 345, 357,
392.
The Eonsmoke and 4X pods are a material part of an apparatus that infringes
claim 21. These pods practice the majority of the elements of claim 21 and the apparatus
would be inoperative without the pod. See id. at Q/A 313-14, 327-28, 346, 358,393. All
of the pods accused in this Investigation have no substantial noninfringing use. They are
configured solely for use in an accused or JUUL ENDS device. Eonsmoke has not
identified any noninfringing devices for which any accused pods are compatible. See id.
at QIA 348. Indeed, the pods have no use outside their use with a device as an ENDS.
See id. at Q/A 315, Q/A 329, Q/A 330, Q/A 394.
The accused Eonsmoke devices practice numerous elements of claim 21 , and each
apparatus would be inoperative without the device. See id. at Q/A 347, Q/A 359. Like
the pods, these devices have no substantial noninfringing use. They are vaporizer devices
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PUBLIC VERSION
configured for use with an infringing ENDS cartridge. See id. at Q/A 316, Q/A 395.
Eonsmoke has not identified any noninfringing pods with which the accused devices are
compatible. Additionally, these devices have no use outside of their use with pods as an
ENDS. See id. at Q/A 349, Q/A 360-361 , Q/A 396.
C. Validity of the '915 Patent
Eonsmoke argues that (1) Qiu (RX-0108) alone renders obvious claims 1, 6, and
21 of the ' 915 patent; (2) Qiu (RX-0108) in combination with Buchberger (RX-0107)
renders obvious claims 1, 6, and 21 of the ' 915 patent; and (3) Qiu (RX-0108) in
combination with Tucker (RX-0109) renders obvious claims 1, 6, and 21 of the ' 915
patent. See Resp. Br. at 48-68. Eonsmoke argues and JLI and the Staff do not dispute
that prior art alleged by Eonsmoke are prior to the priority date of the ' 915 patent. See id.
at 4.
For the reasons set forth below, Eonsmoke has not shown by clear and convincing
evidence that asserted claims 1, 6, and 21 of the ' 915 patent are invalid.
1. Qiu (RX-0108) Alone
Eonsmoke argues that Qiu (RX-0108) alone renders obvious claims 1, 6, and 21
of the ' 915 patent. See Resp. Br. at 48-62.
Independent Claim 1
Eonsmoke argues, inter alia:
Juul does not dispute that Qiu discloses the following features of
claim 1:
• A cartridge comprising:
• a storage compartment configured to hold a vaporizable
material, the storage compartment having a non-circular cross
section, the storage compartment having a top end and a
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PUBLIC VERSION
bottom end opposite the top end along a first dimension,
wherein the non-circular cross section includes two short sides
and two long sides, the two short sides being shorter than the
two long sides to result in the non-circular cross section, and
wherein the storage compartment comprises a plastic material;
• 	an aerosol outlet disposed proximate to the top end of the
storage compartment;
• 	a heater chamber disposed proximate to the bottom end of the
storage compartment, the heater chamber comprising a heating
element configured to aerosolize the vaporizable material,
when the vaporizable material is present, to form an aerosol;
• 	a first electrical contact and a second electrical contact each
configured and disposed to couple and complete an electrical
circuit with a third electrical contact and a fourth electrical
contact in a receptacle of a vaporizer device body, the electrical
circuit configured to provide power to the heating element
when the vaporizer device body is present;
• 	an aerosol channel within the storage compartment, the aerosol
channel extending from the heater chamber to the aerosol
outlet, the aerosol channel configured so that the aerosol, when
the aerosol is present, is inhalable through the aerosol channel;
• 	wherem the first exterior wall and the second exterior wall are
respectively intersected by the two short sides of the non-
circular cross section.
(CX-1353C.0076 and CDX-0007C.86). The dispute for claim 1 therefore
centers on whether the claimed location of the locking gaps and detents
would have been an obvious modification to Qiu. Mr. Flolid correctly
testified that these well-known mechanical interfaces would have been
obvious to the POSA with an engineering background and experience.
This POSA would have had knowledge of these basic mechanical
principles.
Resp. Br. at 48-49.
Asserted claim 1 is recited below:
1. [p] A cartridge comprising:
[a] a storage compartment configured to hold a vaporizable
material, the storage compartment having a non-circular cross
section, the storage compartment having a top end and a
bottom end opposite the top end along a first dimension,
wherein the non-circular cross section includes two short sides
and two long sides, the two short sides being shorter than the
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PUBLIC VERSION
two long sides to result in the non-circular cross section, and
wherein the storage compartment comprises a plastic material;
[b] an aerosol outlet disposed proximate to the top end of the
storage compartment;
[c] a heater chamber disposed proximate to the bottom end of
the storage compartment, the heater chamber comprising a
heating element configured to aerosolize the vaporizable
material, when the vaporizable material is present, to form an
aerosol;
[d] a first electrical contact and a second electrical contact each
configured and disposed to couple and complete an electrical
circuit with a third electrical contact and a fourth electrical
contact in a receptacle of a vaporizer device body, the electrical
circuit configured to provide power to the heating element
when the vaporizer device body is present;
[e] an aerosol channel within the storage compartment, the
aerosol channel extending from the heater chamber to the
aerosol outlet, the aerosol channel configured so that the
aerosol, when the aerosol is present, is inhalable through the
aerosol channel;
[f] a first exterior wall extending between the top end and the
bottom end;
[g] a ~econd exterior wall extending between the top end and
the bottom end,
[h] wherein the first exterior wall and the second exterior wall
are respectively intersected by the two short sides of the non-
circular cross section;
[i] a first locking gap disposed within six millimeters from the
bottom end of the storage compartment and formed within the
first exterior wall, the first locking gap configured to engage
with a first locking detent within the receptacle of the vaporizer
device body when the vaporizer device body is present,
wherein a height of a first interior wall of the vaporizer device
body comprising the first locking detent is at least thirteen
millimeters; and
[j] a second locking gap disposed within six millimeters from
the bottom end of the storage compartment and formed within
the second exterior wall, the second locking gap configured to
engage with a second locking detent within the ·receptacle of
the vaporizer device body when the vaporizer device body is
present, wherein a height of a second interior wall of the
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PUBLIC VERSION
vaporizer device body comprising the second locking detent is
at least thirteen millimeters.
JX-0004 ('915 Patent), claim t. 26
Claims l(fl-[g)
Eonsmoke argues:
Qiu discloses a first exterior wall extending between the top end
and the bottom end. Specifically, since Qiu is rectangular-shaped, the first
exterior wall will be one of the larger two walls defining the rectangular
shape. (RX-0108.0007, para. 0029); (RX-0113.0064, Q/A 135) ....
Qiu discloses a second exterior wall extending between the top end
and the bottom end. Specifically, when Qiu is rectangular-shaped, the
second exterior wall is one of the larger two walls defining the rectangular
shape, and is generally opposite the first wall. The first and second walls
are intersected by the two short-side walls. (RX-0108.0007, para. 0029);
(RX-0113.0064, Q/A 136).
Resp. Br. at 53 .
Mr. Flolid' s opinion does not show that Qiu discloses limitations 1[f] , 1[g] , or
1[i]. First, Mr . Flolid opines that Qiu discloses elements 1 [f] and 1 [g] because Qiu is
"rectangular-shaped." See RX-0113 (Flolid WS) Q/A 135-136. To reach his opinion,
Mr. Flolid misreads the claim language "wherein the first exterior wall and the second
exterior wall are respectively intersected by the two short sides of the non-circular cross
section." Mr. Flolid' s interpretation is that the first and second walls are the two longer
walls and that these longer walls are intersected by a line parallel and coincident to the
short sides of the cross-section. To the contrary, a person of ordinary skill in the art
26 JLI has given a letter designation for each element of the asserted independent claims.
The letter designations used for the elements of this claim is different for infringement
and validity analysis. The administrative law judge is adopting the 1
different letter
designations as appropriate.
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PUBLIC VERSION
would understand that "intersected by" requires that the first and second exterior walls
are the two shorter walls, not the two longer walls.
CX-1222.0022-.0025 (Juul Photo Set 5)
The two short sides terminate at the two long sides. They do not pass through them and
therefore do not intersect them. Instead, the short sides intersect the short walls. See CX-
1353C (Alarcon Rebuttal WS) Q/A 185; CX-1222.0022-.0025 (Juul Photo Set 5); JX-
0004 ('915 Patent), FIG. 24A.
Claim l[i)
Mr. Flolid admits that Qiu does not disclose the locking gaps of limitation 1[i].
See RX-0113 (Flo lid WS) QIA 13 7. Instead, he opines that locking gaps are so well
known that a person of ordinary skill in the art would have found it obvious to modify
Qiu to include locking gaps. See id 	Mr. Flolid's opinion is conclusory and erroneous.
First, a person of ordinary skill in the art would have had neither reason to modify
Qiu to include the required locking gaps nor a reasonable expectation of success if such
modification would have been made. See CX-1353C (Alarcon Rebuttal WS) Q/A 184.
A person of ordinary skill in the art would not have considered using locking gaps and
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PUBLIC VERSION
detents as coupling interfaces for Qiu' s device simply because they may have been
known coupling interfaces. See id. at Q/A 188. A person of ordinary skill would have
understood that certain types of coupling interfaces are better suited for particular
applications and specific use cases. See CX-1353C (Alarcon Rebuttal WS) Q/A 188.
Qiu' s alleged receptacle of the device is shallow relative to the length of the other
components shown in Figure 3 of Qiu. See id. Therefore, a person of ordinary skill
would not have considered using locking gaps and detents as coupling interfaces-which
can provide a weaker connection than press-fit connections in this application-because
they may too easily allow the components to become detached, given the shallow
receptacle and longer components being attached. See id. This would inconvenience the
user by having the components separate unintentionally, for example, during use, storage,
or transport. Accordingly, a person of ordinary skill would not have considered using
locking gaps and detents as coupling interfaces for Qiu' s device simply because they may
have been known coupling interfaces. See id.
Second, the ' 915 patent claims do not merely recite using locking gaps and
detents. The claims recite that they are located on specific components at specific
locations. See id. Mr. Flolid essentially admits that the prior art does not disclose these
specific recited locking gap configuration features, jumping straight to an obviousness
analysis. See RX-0113 (Flolid Direct WS) Q/A 138. To allege, as Mr. Flolid does, that
these specifics in the claims are "nothing more than a change of form, proportion, or
degree" or routine optimization is naYve. See id. (quoting RX-0113 (Flolid Direct WS)
Q/A 137).
Mr. Flolid does not provide any analysis as to how a person of ordinary skill
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PUBLIC VERSION
would have sought to "optimize" the variables. Nor does Mr . Flolid provide any other
evidence to corroborate his opinion. In fact, when asked whether it was known in the art
that a particular height of the locking gaps and detents could achieve a particular result
(such as stability), Mr . Flolid indicated he was not aware of any such knowledge. Flolid
Tr. 286. Additionally, a typical receptacle depth (resulting from the height of the interior
wall) for "nested" type products at the relevant time was only about 4-5 millimeters-
significantly shorter than the claimed 13 millimeters. See CX-1353C (Alarcon Rebuttal
WS) Q/A 194. A person of ordinary skill would have no reason, and cited prior art
provides none, to significantly expand the receptacle depth and place the locking gaps
and detents in the recited locations. This lack of corroborating evidence or knowledge of
a result-effective variable demonstrates that his opinion is based on hindsight.
Third, with respect to the claimed locking gap features, during prosecution of
claim 1, JLI overcame a rejection presenting very similar arguments. See JX-0008 (' 915
FH) at 153-169. JLI overcame these arguments by rightly pointing out that the particular
implementation oflocking gaps claimed by the '915 patent provides additional utility,
including stability of the cartridge and prevention ofleaks. See id ; CX-1353C (Alarcon
Rebuttal WS) Q/A 188. Even if it were obvious to modify Qiu to include locking gaps-
which it is not-it would absolutely not be obvious to a person of ordinary skill to
implement the specific locking gaps taught by claim 1. See CX-1353C (Alarcon Rebuttal
WS) Q/A 187.
Fourth, even iflocking gaps were added to Qiu' s device, and detents were added
to the alleged receptacle in housing 41 - which a person of ordinary skill would not have
done-the resulting modified device would still not meet the recited element of claim 1.
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PUBLIC VERSION
See id. at Q/A 189. Particularly, the locking gap would not be "formed within the first
exterior wall" of the cartridge. See id. at Q/A 189. Rather such locking gaps would be
formed on the exterior wall of the atomizing device 30, which a person of ordinary skill
would have understood to be a different co.mponent from the recited cartridge. See id.
Indeed, a complete redesign of Qiu' s device would be required in order to satisfy these
limitations- relocating any such locking gaps from the atomizer to the storage
compartment and relocating the relative position of the atomizer and the storage
compartment. A person of ordinary skill would not have had a reasonable expectation of
success in performing such a complete overhaul, because it would require significant
alterations to the airflow path and liquid path of Qiu' s device. Moreover, even if Qiu' s
atomizing device 30 was permanently coupled to the liquid storage case 20, a person of _
ordinary skill would not have considered the atomizing device to constitute part of the
"storage compartment" because it is not designed to "hold a vaporizable material ," as
recited in claim 1. See id. Permanently coupling the atomizing device to the liquid
storage case would change Qiu' s principle of operation of having separable components,
which provides that " if the user does not want to continue using the medicinal liquid with
a current flavor, a new liquid storage device could be used, and the old atomizer could be
recycled or dismantled to avoid environmental pollution." See RX-0108 (Qiu), ,r [0039] ;
CX-1353C (Alarcon Rebuttal WS) Q/A 189.
Claim l[i)
For this element, Eonsmoke' s entire argument is, " It would have been obvious to
modify Qiu to include the claimed second locking gap for the same reasons set forth
regarding the first locking gap. (RX-0113 .0065-66, Q/A 139)." Resp. Br. at 55 . Indeed,
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PUBLIC VERSION
Mr. Flolid provides only a single sentence for e~ement 1[j], cross-referencing his analysis
for element 1[i], i.e., " It would have been obvious to modify Qiu to include the claimed
second locking gap for the same reasons I testified previously relative to. the first locking
gap." RX-0113 (Flolid WS) Q/A 139. His analysis thus is incorrect for the reasons
discussed above. See id at Q/A 195.
Dependent Claim 6
Eonsmoke argues:
Qiu does not disclose the manner in which its mouthpiece, the
front cover of suction nozzle 11 and rear cover of suction nozzle 12, is fit
to the body of the casing 10. However, as stated previously, detents are
notoriously well known coupling interfaces and it would have been
obvious to modify Qiu to include them. (RX-0113.0066, Q/A 140).
Snap fittings, including detents and corresponding notches, were
well-known fittings/couplings, especially to the POSA aware of basic
mechanical principles. If the POSA wanted to increase the security of
Qiu' s mouthpiece coupling, he would have found it obvious to have
substituted the well-known coupling interface of detents for Qiu' s press-fit
interface. KSR , 550 U.S. at 416. According to Mr. Flolid, the easiest way
of implementing a snap-fit coupling interface would be to arrange the
mouthpiece such that it fits over the cartridge body. (RX-0113 .0066, Q/A
140).
Resp. Br . at 55-56. 27
Asserted claim 6 is recited below:
4. The cartridge of claim 1, further comprising:
a mouthpiece comprising the aerosol outlet, wherein the first
exterior wall has a first point between the bottom end of the
storage compartment and the top end of the storage
compartment, wherein the second exterior wall has a second
point between the bottom end of the storage compartment and
the top end of the storage compartment, wherein the
27 It is noted that the undersigned struck a portion ofEonsmoke's brief under the heading
for claim 6. See Order No. 40 (Dec. 12 , 2019).
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PUBLIC VERSION
mouthpiece terminates in a distal edge, and wherein the distal
edge of the mouthpiece is disposed at the first point and the
second point.
6. The cartridge of claim 4, further comprising:
a first mouthpiece detent on the first exterior wall proximate to
the first point; and
a second mouthpiece detent on the second exterior wall
proximate to the second point, wherein the mouthpiece is
secured to the storage compartment by the first detent and the
second detent.
JX-0004 (' 915 Patent), claims 4, 6.
Claim 6 depends from claim 4, which in turn depends from claim 1. See CX-
1353C (Alarcon Rebuttal WS) Q/A 196. Mr. Flolid' s direct testimony provides no
opinion with respect to the additional limitation of claim 4, and thus Eonsmoke cannot
meet its burden with respect to claim 6. Moreover, as discussed above regarding claim
elements 1[f] , 1[g], and 1 [h] , the first and second exterior walls that Mr. Flolid identifies
do not meet the claim limitations.
B
ti!
~
9
7
- 2
RX-0107 (Buchberger), FIGS. 2, 8.
The walls identified by Mr . Flolid therefore also cannot meet the elements of claim 4.
See CX-1353C (Alarcon Rebuttal WS) Q/A 197.
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PUBLIC VERSION
Claim 6 adds "a first mouthpiece detent on the first exterior wall proximate to the
first point; and a second mouthpiece detent on the second exterior wall proximate to the
second point, wherein the mouthpiece is secured to the storage compartment by the first
detent and the second detent." Mr. Flolid states that Qiu is silent as to the manner in
which its mouthpiece, the front cover of suction nozzle 11 and rear cover of suction
nozzle 12, fit to the body of the casing 10. See RX-0113 (Flolid WS) Q/A 140. He
opines, however, that because snap fittings were so well known, it would have been
obvious to modify Qiu to use such a fitting to secure its mouthpiece. See id. This
analysis is flawed for several reasons: See CX-1353C (Alarcon Rebuttal WS) Q/A 198.
First, Mr . Flolid' s opinion that Qiu is silent is false because Qiu states that " [o]ne end of
the casing 10 is securely connected to the suction nozzle, for example, by way of
insertion of threading." See RX-0108 (Qiu), ,r [0029]. Qiu thus describes ways of
attaching the suction nozzle that do not use detents. See CX-1353C (Alarcon Rebuttal
WS) Q/A 199.
Mr . Flolid follows up that flawed rationale with an unsupported opinion that "[i]n
my experience, the easiest way of implementing a snap-fit coupling interface would be to
arrange the mouthpiece such that it fits over the cartridge body." See RX-0113 (Flolid
WS) Q/A 140. First, Mr. Flolid does not explain what "experience" this is based on.
Second, his proposal would require a modification to Qiu that he does not explain. As
shown in Figures 1 and 3 of Qiu, the suction nozzle 11/12 is disposed inside of the casing
10. Mr. Flolid' s modification would dispose the suction nozzle outside (i.e., "over") the
casing, which would require increasing the overall size of the device or decreasing the
size of the casing and thus the amount ofliquid that could be stored inside. A snap-fit
214

PUBLIC VERSION
connection over the outside of the casing would also be more prone to leakage compared
to the interior press-fit connection disclosed in Qiu. Further, modifying the mouthpiece
as Mr. Flolid suggests would increase product complexity. A person of ordinary skill
would have wanted to avoid these effects. See CX-1353C (Alarcon Rebuttal WS) Q/A
201.
Independent Claim 21
Eonsmoke argues, inter a/ia:
Juul does not dispute that Qiu discloses the following features of
claim 21:
• 	An apparatus comprising:
• 	a vaporizer device body comprising:
• 	a receptacle;
• 	a third electrical contact and a fourth electrical contact disposed
within the receptacle;
• 	a cartridge having a bottom end and a top end opposite the bottom
end along a first dimension, the cartridge comprising:
• 	a storage compartment configured to hold a vaporizable material,
the storage compartment having a non-circular cross section,
wherein the non-circular cross section includes two short sides and
two long sides, the two short sides being shorter than the two long
sides to result in the non-circular cross section, and wherein the
storage compartment comprises a plastic material;
• 	an aerosol outlet at the top end of the cartridge;
• 	a heating element proximate to the bottom end of the cartridge, the
heating element configured to aerosolize the vaporizable material
to form an aerosol for delivery through the aerosol outlet;
• 	a first electrical contact and a second electrical contact configured
and disposed to couple and complete an electrical circuit with the
third electrical contact and the fourth electrical contact, the
electrical circuit configured to provide power to the heating
element.
(CX-1353C.0076; CX-1353C.0086; CDX-0007C.86; and CDX-
0007C.93). Like claim 1, the dispute for claim 21 therefore centers on
whether the claimed location of the locking gaps and detents would have
been an obviot1;s modification to Qiu. Mr. Flolid correctly testified that
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PUBLIC VERSION
these well-known mechanical interfaces were basic mechanical principles
that would have been obvious to the POSA having engineering
background and experience.
Resp. Br. at 56-57 (footnote omitted).
Asserted claim 21 is recited below:
21. [p] An apparatus comprising:
[a] a vaporizer device body comprising:
a receptacle;
[b] a third electrical contact and a fourth electrical contact
disposed within the receptacle;
[c] a first locking detent and a second locking detent within
the receptacle; and
[d] a first interior wall and a second interior wall within the
receptacle, wherein each of the first interior wall and the
second interior wall are at least thirteen millimeters in
height, wherein the first interior wall and the second
interior wall respectively comprise the first locking detent
and the second locking detent; and
[e] a cartridge having a bottom end and a top end opposite the
bottom end along a first dimension, the cartridge comprising:
[f] a storage compartment configured to hold a vaporizable
material, the storage compartment having a non-circular
cross section, wherein the non-circular cross section
includes two short sides and two long sides, the two short
sides being shorter than the two long sides to result in the
non-circular cross section, and wherein the storage
compartment comprises a plastic material;
[g] an aerosol outlet at the top end of the cartridge;
[h] a heating element proximate to the bottom end of the
cartridge, the heating element configured to aerosolize the
vaporizable material to form an aerosol for delivery
through the aerosol outlet;
[i] a first electrical contact and a second electrical contact
configured and disposed to couple and complete an
electrical circuit with the third electrical contact and the
fourth electrical contact, the electrical circuit configured to
provide power to the heating element;
216

.PUBLIC VERSION
Li] a first exterior wall and a second exterior wall extending
between the top end and the bottom end, wherein the first
exterior wall and the second exterior wall are respectively
intersected by the two short sides of the non-circular cross
section;
[k] a first locking gap disposed within six millimeters from
the bottom end of the storage compartment and formed
within the first exterior wall, the first locking gap
configured to engage with the frrst locking detent; and
[l] a second locking gap disposed within six millimeters
from the bottom end of the storage compartment and
formed within the second exterior wall, the second locking
gap configured to engage with the second locking detent.
JX-0004 (' 915 Patent), claim 21. 28
As discussed below, Qiu does not disclose elements 21[a], 21[c], 21[d], 21[j],
21[k], and 21[1]. See CX-1353C (Alarcon Rebuttal WS) Q/A 202.
Claim 21[a)
It has not been shown that Qiu discloses a receptacle. See RX-0113 (Flolid WS)
Q/A 141. Mr. Flolid points to Figure 3 of Qiu, but does not name a feature or reference
number that supposedly comprises the claimed receptacle. Therefore, Eonsmoke has not
shown that Qiu teaches a receptacle as recited in claim 21[a]. See CX-1353C (Alarcon
Rebuttal WS) Q/A 203.
Claim 2l[c)
For claim element 21[c], Mr. Flolid refers back to his flawed analysis of
limitation 1[i] regarding the casing 10 of Qiu allegedly being press-fit into a receptacle of
28 JLI has given a letter designation for each element of the asserted independent claims.
The letter designations used for the elements of this claim is different for infringement
and validity analysis. The administrative law judge is adopting the different letter
designations as appropriate.
217

PUBLIC VERSION
the housing 41. See RX-0113 (Flolid WS) Q/A 143. His analysis is incorrect for the
same reasons. See CX-1353C (Alarcon Rebuttal WS) Q/A 204. Claim element 21[d] is
substantially similar to elements 1 [i] and 1[j]. Mr. Flolid thus refers back to the
previously discussed analysis of claim 1. For at least the same reasons discussed in
relation to elements l[i] and l[j], element 21[d] is not rendered obvious by Qiu. See id
at Q/A 205.
Claim 21(il, [kl, (I)
For claim element 21 [j], Mr. Flolid provides an analysis similar to the one he
provided for elements l[g] and l[h]. See RX-0113 (Flolid WS) Q/A 150. Thus, it is
erroneous for the same reasons. See CX-1353C (Alarcon Rebuttal WS) Q/A 206. Claim
element 21 [k] is essentially identical to features in element 1[i], and Mr. Flolid's analysis
is incorrect for the same reasons. See id. at Q/A 207. Claim element 21 [l] is essentially
identical to element 1[j]. Therefore, the analysis of element 1[j] applies here.
Additionally, the analysis of element 21 [k] and element 1[i], which is referenced in the
discussion of element 21 [k] also applies here. For at least the reasons articulated above
for these elements, Qiu does not disclose element 21 [l]. See id at Q/A 208.
2. 	. Qiu (RX-0108) and Buchberger (RX-0107)
Eonsmoke argues that Qiu (RX-0108) in combination with Buchberger (RX-
0107) renders obvious claims 1, 6, and 21 of the '915 patent. See Resp. Br. at 62-65.
Mr. Flolid only cites Buchberger for the teaching of one limitation, element 1 [i]
requiring locking gaps and locking detents. Buchberger does not disclose these elements,
and does not supply a reason to modify Qiu to include them.
218

PUBLIC VERSION
Independent Claim 1
Eonsmoke argues:
To the extent Qiu does not disclose "a first locking gap disposed
within six millimeters from the bottom end of the storage
compartment and formed within the first exterior wall, the first
locking gap configured to engage with a first locking detent within the
receptacle of the vaporizer device body when the vaporizer device
body is present, wherein a height of a first interior wall of the
vaporizer device body comprising the first locking detent is at least
thirteen millimeters," this feature would have been obvious over
Buchberger. Buchberger describes see snap-in hooks 8 and latching lugs
9, which provide a "snap connection" while still permitting selective
detachment. (RX-0113.0064-66, Q/A 137).
Accordingly, one would have found it obvious to modify Qiu such
that its storage compartment included the claimed first locking gap, as the
substitution of one well known coupling interface for another. (RX-
0113.0064-66, Q/A 137). KSR , 550 U.S. at 416.
To the extent that Qiu or Buchberger does not disclose a detent
specifically within the cartridge receptacle, it would have been obvious to
place the detent within the cartridge receptacle over Buchberger's
disclosure of using a detent generally. When using a detent, there would
be two possible choices as to the location of the detent: 	1) detent on the
cartridge or 2) detent on the device. Tucker recognized that detents could
be used generally for attaching the cartridge to the receptacle, there were a
finite number of ways to make such an attachment, and one of ordinary
skill would have had a reasonable expectation of success that the detent
could be placed within the receptacle. 	(RX-0113.0065-66, Q/A 137).
KSR, 550 U.S. at 421.
219

PUBLIC VERSION
The location would have been obvious as a routine optimization in
the design process. To the extent the prior art does not teach a locking gap
disposed within 6 mm from a bottom end of the storage
compartment, and where a first interior wall is at least 13
mm, it would have been obvious to select these values
using routine optimization. (RX-0113.0065-66, Q/A 138).
Locking gaps and detents were known in the prior
art, such as those disclosed in Buchberger. The claimed
location of the locking gaps and detents is nothing more
than a change of form, proportion, or degree from the
locking gaps that were already disclosed in the prior art.
(RX-0113.0065-66, Q/A 138). 	.
It would have been obvious to modify Qiu to
include the claimed second locking gap for the same
reasons set forth regarding the first locking gap. (RX-
0113.0065-66, Q/A 137-139).
Resp. Br. at 62-63 (emphasis in original).
Asserted claim 1 is recited below:
1. [p] A cartridge comprising:
99
10
[a] a storage compartment configured to hold a vaporizable
material, the storage compartment having a non-circular cross
section, the storage compartment having a top end and a
bottom end opposite the top end along a first dimension,
wherein the non-circular cross section includes two short sides
and two long sides, the two short sides being shorter than the
two long sides to result in the non-circular cross section, and
wherein the storage compartment comprises a plastic material;
[b] an aerosol outlet disposed proximate to the top end of the
storage compartment;
[c] a heater chamber disposed proximate to the bottom end of
the storage compartment, the heater chamber comprising a
heating element configured to aerosolize the vaporizable
material, when the vaporizable material is present, to form an
aerosol;
[d] a first electrical contact and a second electrical contact each
configured and disposed to couple and complete an electrical
circuit with a third electrical contact and a fourth electrical
contact in a receptacle of a vaporizer device body, the electrical
220
8

PUBLIC VERSION
circuit configured to provide power to the heating element
when the vaporizer device body is present;
[e] an aerosol channel within the storage compartment, the
aerosol channel extending from the heater chamber to the
aerosol outlet, the aerosol channel configured so that the
aerosol, when the aerosol is present, is inhalable through the
aerosol channel;
[f] a first exterior wall extending between the top end and the
bottom end;
[g] a second exterior wall extending between the top end and
the bottom end,
[h] wherein the first exterior wall and the second exterior wall
are respectively intersected by the two short sides of the non-
circular cross section;
[i] a first locking gap disposed within six millimeters from the
bottom end of the storage compartment and formed within the
first exterior wall, the first locking gap configured to engage
with a first locking detent within the receptacle of the vaporizer
device body when the vaporizer device body is present,
wherein a height of a first interior wall of the vaporizer device
body comprising the first locking detent is at least thirteen
millimeters; and
O] a second locking gap disposed within six millimeters from
the bottom end of the storage compartment and formed within
the second exterior wall, the second locking gap configured to
engage with a second locking detent within the receptacle of
the vaporizer device body when the vaporizer device body is
present, wherein a height of a second interior wall of the
vaporizer device body comprising the second locking detent is
at least thirteen millimeters.
JX-0004 (' 915 Patentj, claim 1.
Buchberger does not provide a reason to use snap-in hooks and latching lugs to
connect Qiu ' s cartridge with its device. Mr. Flolid does not identify a reason, other than
his opinion that snap-in hooks and lugs were known generally, as to why a person of
ordinary skill in the art would do so with a reasonable expectation of success. See id. at
Q/A 190. Buchberger' s snap-in hook 8 is part of support housing 10, not liquid container
221

PUBLIC VERSION
4. See RX-0107 (Buchberger), ,r [0115]. Additionally, " [t]he contact elements 20 are
fastened to the support housing 10 of the reusable inhalator part 1." See id Thus, snap-
in hook 8, which Mr. Flolid presumablr purports to be the claimed "locking gap," is part
of "extensions of the housing." It is not "formed within the first exterior wall," as recited
by claim 1. Indeed, snap-in hook 8 is formed as an inwardly extending protrusion that
engages the indentions formed by latching lugs 9. See CX-1353C (Alarcon Rebuttal WS)
Q/A 191. It is not a .locking gap as recited in claim 1. Likewise, Buchberger' s latching
lug 9 forms an indentation, which Mr. Flolid presumably purports to be the claimed
"detent," disposed on an exterior surface of the inhalator part 1. This indentation is not
"within the receptacle of the vaporizer device body" per claim 1. The combination of
Qiu and Buchberger thus does not disclose every limitation of claim 1.
Dependent Claim 6
Eonsmoke argues:
To the extent Qiu does not disclose "a first mouthpiece detent on
the first exterior wall proximate to the first point; and a second
mouthpiece detent on the second exterior wall proximate to the second
point, wherein the mouthpiece is secured to the storage compartment
by the first detent and the second detent," detents are notoriously well
known coupling interfaces and it would have been obvious to modify Qiu
to include them. (RX-0113.0066, Q/A 140).
As mentioned, snap fittings, including detents and corresponding
notches, are well-known fittings/couplings. Detents were disclosed in
Buchberger. If one wanted to increase the security of Qiu' s mouthpiece
coupling, one could have substituted the well-known coupling interface of
detents for Qiu' s press-fit interface. KSR, 550 U.S. at 416. According to
Mr. Flolid, the easiest way of implementing a snap-fit coupling interface
would be to arrange the mouthpiece such that it fits over the cartridge
body. (RX-0113.0066, Q/A 140).
Resp. Br . at 63-64 (emphasis in original).
222

PUBLIC VERSION
Asserted claim 6 is recited below:
4. The cartridge of claim 1, further comprising:
a mouthpiece comprising the aerosol outlet, wherein the first
exterior wall has a first point between the bottom end of the
storage compartment and the top end of the storage
compartment, wherein the second exterior wall has a second
point between the bottom end of the storage compartment and
the top end.of the storage compartment, wherein the
mouthpiece terminates in a distal edge, and wherein the distal
edge of the mouthpiece is disposed at the first point and the
second point.
6. The cartridge of claim 4, further comprising:
a first mouthpiece detent on the first exterior wall proximate to
the first point; and
a second mouthpiece detent on the second exterior wall
proximate to the second point, wherein the mouthpiece is
secured to the storage compartment by the first detent and the
second detent.
JX-0004 (' 915 Patent), claims 4, 6.
Claim 6 depends from claim 4, which in turn depends from claim 1. See CX-
1353C (Alarcon Rebuttal WS) Q/A 196. Mr. Flolid' s direct testimony provides no
opinion whatsoever with respect to the additional limttation of claim 4, and thus
Eonsmoke cannot meet its burden with respect to claim 6. Claim 6 adds "a first
mouthpiece detent on the first exterior wall proximate to the first point; and a second
mouthpiece detent on the second exterior wall proximate to the second point, wherein the
mouthpiece is secured to the storage compartment by the first detent and the second
detent."
Mr. Flolid does not cite Buchberger for a disclosure of this limitation of clrum 6.
The combination of Buchberger with Qiu thus is erroneous for the reasons discussed at
length above. See CX-1353C (Alarcon Rebuttal WS) Q/A 200.
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PUBLIC VERSION
Independent Claim 21
Eonsmoke argues:
To the extent Qiu does not disclose "a first locking detent and a
second locking detent within the receptacle," it would have been
obvious to modify Qiu to include them. This would have been an obvious
modification in view of Buchberger, which describes detents as known
attachment methods as set forth above. (RX-0113 . 0067, Q/A 143).
To the extent Qiu does not disclose "a first interior wall and a
second interior wall within the receptacle, wherein each of the first
interior wall and the second interior wall are at least thirteen
millimeters in height, wherein the first interior wall and the second
interior wall respectively comprise the first locking detent and the
second locking detent," as stated previously regarding claim 1, detents at
the claimed location within the receptacle would have been obvious over
Qiu in view of Buchberger and as a matter of routine optimization. (RX-
0113. 0064-66, 67, Q/A 137-138, 144).
To the extent Qiu does not disclose "a first locking gap disposed
within six millimeters from the bottom end of the storage
compartment and formed within the first exterior wall, the first
locking gap configured to engage with the first locking detent," as
stated above, the claimed location of the locking gaps and detents would
have been an obvious modification of Qiu in view of Buchberger and as a
matter of routine optimization. (RX-0113.0064-0066, 0071 , Q/A 137-138,
151).
To the extent Qiu does not disclose "a second locki~g gap
disposed within six millimeters from the bottom end of the storage
compartment and formed within the second exterior wall, the second
locking gap configured to engage with the second locking detent," it
would have been obvious to modify Qiu in view of Buchberger to include
the claimed second locking gap for the same reasons as articulated above
relative to the first locking gap. (RX-0113 .0064-0066, 0071 , Q/A 137-138,
152).
Resp. Br. at 64-65 (emphasis in original).
Asserted claim 21 is recited below:
21 . [p] An apparatus comprising:
[a] a vaporizer device body comprising:
a receptacle;
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PUBLIC VERSION
[b] a third electrical contact and a fourth electrical contact
disposed within the receptacle;
[c] a first locking detent and a second locking detent within
the receptacle; and
[d] a first interior wall and a second interior wall within the
receptacle, wherein each of the first interior wall and the
second interior wall are at least thirteen millimeters in
height, wherein the first interior wall and the second
interior wall respectively comprise the frrst locking detent
and the second locking detent; and
[e] a cartridge having a bottom end and a top end opposite the
bottom end along a frrst dimension, the cartridge comprising:
[f] a storage compartment configured to hold a vaporizable
material, the storage compartment having a non-circular
cross section, wherein the non-circular cross section
includes two short sides and two long sides, the two short
sides being shorter than the two long sides to result in the
non-circular cross section, and wherein the storage
compartment comprises a plastic material;
[g] an aerosol outlet at the top end of the cartridge;
[h] a heating element proximate to the bottom end of the
cartridge, the heating element configured to aerosolize the
vaporizable material to form an aerosol for delivery
through the aerosol outlet;
[i] a frrst electrical contact and a second electrical contact
configured and disposed to couple and complete an
electrical circuit with the third electrical contact and the
fourth electrical contact, the electrical circuit configured to
provide power to the heating element;
O] a first exterior wall and a second exterior wall extending
between the top end and the bottom end, wherein the first
exterior wall and the second exterior wall are respectively
intersected by the two short sides of the non-circular cross
section;
[k] a frrst locking gap disposed within six millimeters from
the bottom end of the storage compartment and formed
within the first exterior wall, the first locking gap
configured to engage with the frrst locking detent; and
[l] a second locking gap disposed within six millimeters
from the bottom end of the storage compartment and
225

PUBLIC VERSION
formed within the second exterior wall, the second locking
gap configured to engage with the second locking detent.
JX-0004 (' 915 Patent), claim 21.
Qiu in view of Buchberger does not disclose elements 21[a], 21[c], 2l[d] , 2l[j] ,
21[k], and 21[1]. CX-1353C (Alarcon Rebuttal WS) Q/A 202-203 . For claim element
21 [c], Mr. Flolid refers back to his flawed analysis of limitation 1[i] regarding the casing
10 of Qiu allegedly being press-fit into a receptacle of the housing 41. RX-0113 (Flo lid
WS) Q/A 143 . His analysis is erroneous for the same reasons. See CX-l353C (Alarcon
Rebuttal WS) Q/A 204.
Claim element 21 [d] is substantially similar to elements 1[i] and 1[j]. Mr . Flolid
thus refers back to the previously discussed analysis of claim 1. For at least the same
reasons discussed in relation to elements 1[i] and 1[j], element 21 [d] is not rendered
obvious by Qiu in combination with Buchberger. See id at Q/A 205.
For claim element 21 [j], Mr . Flolid provides an analysis similar to the one he
provided for element l[g] and l[h]. See RX-0113 (Flolid WS) Q/A 150. Thus, it is
erroneous for the same reasons. See CX-l353C (Alarcon Rebuttal WS) Q/A 206.
Claim element 21 [k] is essentially identical to features in element 1[i], and Mr .
Flolid' s analysis is incorrect for the same reasons. See id at Q/A 207. Claim element
21 [l] is essentially identical to element 1[j] . Therefore, the analysis of element 1[j]
applies here. Additionally, the analysis of element 21 [k] and element 1[i], which is
referenced in the discussion of element 21 [k], would also be applicable here. For at least
the reasons articulated in relation to each of these elements, Qiu in view of Buchberger
does not disclose element 21 [l]. See id. at QIA 208.
226

PUBLIC VERSION
3. 	Qiu (RX-0108) and Tucker (RX-0109)
Eonsmoke argues that Qiu (RX-0108) in combination with Tucker (RX-0109)
renders obvious claims 1, 6, and 21 of the ' 915 patent. See Resp. Br. at 48-68.
Independent Claim 1
Eonsmoke argues:
To the. extent Qiu does not disclose "a first locking gap disposed
within six millimeters from the bottom end of the storage
compartment and formed within the first exterior wall, the first
locking gap configured to engage with a first locking detent within the
receptacle of the vaporizer device body when the vaporizer device
body is present, wherein a height of a first interior wall of the
·vaporizer device body comprising the first locking detent is at least
thirteen millimeters," this feature would have been obvious over Tucker.
(RX-0113.0064-66, Q/A 137).
Tu cker discloses "As shown in FIGS. 1, 4, 6, 8, 9 and 13 , a novel
electronic cigarette 60 comprises a replaceable cartridge ( or first section)
70 and a reusable fixture ( or second section) 72, which are coupled
together at a threaded connection 205 or by other convenience such as a
snug-fit, detent, clamp and/or clasp." (RX-0109.0012, para. 0033); (RX-
0113 .0064-66).
It would have been obvious to modify the Qiu device to include the
claimed locking gaps and detents, as taught by Tucker, as a simple
substitution of one known way of interfacing the cartridge and the device
with another, yielding predictable results. (RX-0113 .0064-66, Q/A 137).
KSR, 550 U.S. at 416.
To the extent that Tucker does not disclose a detent specifically
within the cartridge receptacle, it would have been obvious to place the
detent within the cartridge receptacle over Tucker' s disclosure of using a
detent generally. (RX-0113.0064, q/a 137). When using a detent, there
would be two possible choices as to the location of the detent: 	1) detent
on the cartridge or 2) detent on the device. Tucker recognized that detents
could be used generally for attaching the cartridge to the receptacle, there
were a finite number of ways to make such an attachment, and one of
ordinary skill would have had a reasonable expectation of success that the
detent could be placed within the receptacle. (RX-0113.0065-66, Q/A
137). KSR, 550 U.S . at 42 1.
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PUBLIC VERSION
The location would have been obvious as a routine optimization in
the design process. To the extent the prior art does not teach a locking gap
disposed within 6 mm from a bottom end of the storage compartment, and
where a first interior wall is at least 13 mm, it would have been obvious to
select these values using routine optimization.(RX-0113.0065-66, Q/A
138).
Locking gaps and detents were known in the prior art, such as
those disclosed in Tucker. The claimed location of the locking gaps and
detents is nothing more than a change of form, proportion, or degree from
the locking gaps that were already disclosed in the prior art. (RX-
0113.0065-66, Q/A 138).
It would have been obvious to modify Qiu to include the claimed
second locking gap for the same reasons set forth regarding the first
locking gap.(RX-0113.0065-66, Q/A 137-139).
Resp. Br. at 65-66 (emphasis in original).
Mr. Flolid opines that Tucker provides a second example of a detent and locking
gap interface. See RX-0113 (Flolid WS) Q/A 137. Mr. Flolid's opinion lacks sufficient
analysis. See CX-1353C (Alarcon Rebuttal WS) Q/A 192. He opines that merely
disclosing a detent of any kind is sufficient for a person of ordinary skill in the art to be
able to combine the teachings of Tucker with Qiu to arrive at the claimed locking gaps
and detents of claim 1. See id. He opines that such a modification would merely be "a
simple substitution of one known way of interfacing the cartridge and the device with
another, yielding predictable results." See RX-0113 (Flolid WS) Q/A 137. Mr. Flolid
makes no attempt to explain how the generic "detent" disclosed in Tucker would teach
the specific implementation of locking gaps disposed within a first and second exterior
wall and within 6 millimeters of the bottom end of the storage compartment. These types
of broad, unsupported statements are insufficient to establish that the combination of Qiu
and Tucker discloses or renders obvious the claimed elements. See CX-1353C (Alarcon
228

PUBLIC VERSION
Rebuttal WS) Q/A 192. Mr. Flolid opines that, when using a detent (which itself would
not have been obvious), there are only two possible choices as to the location of the
detent, i.e., a detent on the cartridge or a detent on the device. Notwithstanding
Eonsmoke' s reply argument that " utilizing detents and locking gaps in Qiu would have
merely been the substitution of one known mechanical coupling interface for another,"
this argument without any explanation is insufficient to show that a person of ordinary
skill in the art would have combined Tucker with Qiu to arrive at the claimed features.
See id. at Q/A 193; Resp. Reply at 14.
Dependent Claim 6
Eonsmoke argues:
To the extent Qiu does not disclose "a first mouthpiece detent on
the first exterior wall proximate to the first point; and a second
mouthpiece detent on the second exterior wall proximate to the second
point, wherein the mouthpiece is secured to the storage compartment
by the first detent and the second detent," detents are well known
coupling interfaces, and it would have been obvious to modify Qiu to
include them. (RX-0113.0066, Q/A 140).
As mentioned, snap fittings, including detents and corresponding
notches, are well-known fittings/couplings. Detents were disclosed in
Tucker. If one wanted to increase the security of Qiu' s mouthpiece
coupling, one could have substituted the well-known coupling interface of
detents for Qiu' s press-fit interface. KSR, 550 U.S. at 416. According to
Mr . Flolid, the easiest way of implementing a snap-fit coupling interface
would be to arrange the mouthpiece such that it fits over the cartridge
body. (RX-0113 .0066, Q/A 140).
Resp. Br. at 66-67 (emphasis in original).
Asserted claim 6 is recited below:
4. The cartridge of claim 1, further comprising:
a mouthpiece comprising the aerosol outlet, wherein the frrst
exterior wall has a frrst point between the bottom end of the
229

PUBLIC VERSION
storage compartment and the top end of the storage
compartment, wherein the second exterior wall has a second
point between the bottom erid of the storage compartment and
the top end of the storage compartment, wherein the
mouthpiece terminates in a distal edge, and wherein the distal
edge of the mouthpiece is disposed at the first point and the
second point.
6. The cartridge of claim 4, further comprising:
a first mouthpiec·e detent on the first exterior wall proximate to
the first point ; and
a second mouthpiece detent on the second exterior wall
proximate to the second point, wherein the mouthpiece is
secured to the storage compartment by the first detent and the
second detent.
JX-0004 (' 915 Patent), claims 4, 6.
Claim 6 depends from claim 4, which in turn depends from claim 1. Eonsmoke
does not cite Tucker for any limitations of claims 4 or 6, and therefore the combination of
Qiu with Tucker does not disclose the limitations of dependent claim 6 for the reasons
discussed above. The combination of Qiu with Tucker does not establish a prima facie
case of obviousness with respect to claim 6.
Independent Claim 21
Eonsmoke argues:
To the extent Qiu does not disclose "a first locking detent and a
second locking detent within the receptacle," locking gaps and detents are
notoriously well-known coupling interfaces and it would have been
obvious to modify Qiu to include them. This would have been an obvious
modification in view of Tu cker, which describes detents as known
attachment methods, as set forth above regarding claim 1. (RX-0113.
0067, Q/A 143).
To the extent Qiu does not disclose "a first interior wall and a
second interior wall within the receptacle, wherein each of the first
interior wall and the second interior wall are at least thirteen
millimeters in height, wherein the first interior wall and the second
230

PUBLIC VERSION
interior wall respectively comprise the first locking detent and the
second locking detent," as stated previously regarding claim 1, detents at
the claimed location within the receptacle would have been obvious over
Qiu in view of Tucker and as a matter of routine optimization. (RX-
0113.0064-66, 67, Q/A 137-138, 144).
To the extent Qiu does not disclose "a first locking gap disposed
within six millimeters from the bottom end of the storage
compartment and formed within the first exterior wall, the first
locking gap configured to engage with the first locking detent," as
stated above, the claimed location of the locking gaps and detents would
have been an obvious modification of Qiu in view of Tucker and as a
matter of routine optimization. (RX-0113.0064-0066, 0071 , Q/A 137-138,
151).
To the extent Qiu does not disclose "a second locking gap
disposed within six millimeters from the b9ttom end of the storage
compartment and formed within the second exterior wall, the second
locking gap configured to engage with the second locking detent," it
would have been obvious to modify Qiu to include the claimed second
locking gap for the same reasons as articulated above relative to the first
locking gap. (RX-0113 .0064-0066, 0071 , Q/A 137-138, 152).
Resp. Br. at 67-68 (emphasis in original).
Asserted claim 21 is recited below:
21 . [p] An apparatus comprising:
[a] a vaporizer device body comprising:
a receptacle;
[b] a third electrical contact and a fourth electrical contact
disposed within the receptacle;
[c] a first locking detent and a second locking detent within
the receptacle; and
[d] a first interior wall and a second interior wall within the
receptacle, wherein each of the first interior wall and the
second interior wall are at least thirteen millimeters in
height, wherein the first interior wall and the second
interior wall respectively comprise the first locking detent
and the second locking detent; and
[e] a cartridge having a bottom end and a top end opposite the
bottom end along a first dimension, the cartridge comprising:
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PUBLIC VERSION
[f] a storage compartment configured to hold a vaporizable
material, the storage compartment having a non-circular
cross section, wherein the non-circular cross section
includes two short sides and two long sides, the two short
sides being shorter than the two long sides to result in the
non-circular cross section, and wherein the storage
compartment comprises a plastic material;
[g] an aerosol outlet at the top end of the cartridge;
[h] a heating element proximate to the bottom end of the
cartridge, the heating element configured to aerosolize the
vaporizable material to form an aerosol for delivery
through the aerosol outlet;
[i] a first electrical contact and a second electrical contact
configured and disposed to couple and complete an
electrical circuit with the third electrical contact and the
fourth electrical contact, the electrical circuit configured to
provide power to the heating element;
[j] a first exterior wall and a second exterior wall extending
between the top end and the bottom end, wherein the first
exterior wall and the second exterior wall are respectively
intersected by the two short sides of the non-circular cross
section;
[k] a first locking gap disposed within six millimeters from
the bottom end of the storage compartment and formed
within the first exterior wall, the first locking gap
configured to engage with the first locking detent; and
[l] a second locking gap disposed within six millimeters
from the bottom end of the storage compartment and
formed within the second exterior wall, the second locking
gap configured to engage with the second locking detent.
JX-0004 ('915 Patent), claim 21.
Qiu in view of Tucker does not disclose elements 21[a], 21[c], 2l[d] , 21[j], 21[k],
and 21(1]. See CX-1353C (Alarcon Rebuttal WS) Q/A 202. For claim element 21[c],
Mr. Flolid refers back to his flawed analysis of limitation 1 [i] regarding the casing 10 of
Qiu allegedly being press-fit into a receptacle of the housing 41. See RX-0113 (Flolid
WS) Q/A 143 . Thus, his analysis is deficient for the same reasons. CX-1353C (Alarcon
232

PUBLIC VERSION
Rebuttal WS) QIA 204. Claim element 21 [d] is substantially similar to elements 1 [i] and
1[j]. Mr. Flolid thus refers back to the previously discussed analysis of claim 1. For at
least the same reasons discussed in relation to elements 1 [i] and 1 [j] , element 21 [d] is not
rendered obvious by Qiu, alone or in combination with Buchberger or Tucker. See id. at
QIA 205. For claim element 21[j], Mr. Flolid provides an analysis similar to the one he
provided for elements 1 [g] and 1 [h] . See RX-0113 (Flolid WS) QIA 150. Thus, it is
deficient for the same reasons. See CX-1353C (Alarcon Rebuttal WS) QIA 206. Claim
element 21[k] is essentially identical to features in element l[i], and Mr. Flolid' s analysis
is erroneous for the same reasons. See id. at QIA 207. Claim element 21 [l] is essentially
identical to element 1 [j] . Therefore, the analysis of element 1 [j] applies here.
Additionally, the analysis of element 21 [k] and element 1[i], which is referenced in the
discussion of element 21 [k] , would also be applicable here. For at least the reasons
articulated in relation to each of these elements, Qiu in view of Tucker also does not
disclose element 21 [l]. See id. at QIA 208.
D. 	Domestic Industry (Technical Prong)
Complainant asserts claims 1, 6, 15 , 18 , and 21 of the ' 915 patent for domestic
industry. See Compl. Br. at 149. As discussed below, the JUULpod practices claims 1,
6, 15 , and 18 , and the combination of the JUUL device and JUULpod practices claim 21 .
Additionally, Mr. Alarcon physically inspected the JUUL system, including the JUUL
device and JUULpod. He also reviewed numerous documents and materials and
concluded that the JUUL system practiced these claims. See CX-0016C (Alarcon WS)
QIA 505.
233 \

PUBLIC VERSION
1. 	Independent Claim 1
Asserted claim 1 is recited below:
1. A cartridge comprising:
[a] a storage compartment configured to hold a vaporizable
material, the storage compartment having a non-circular cross
section, the storage compartment having a top end and a
bottom end opposite the top end along a first dimension,
wherein the non-circular cross section includes two short sides
and two long sides, the two short sides being shorter than the
two long sides to result in the non-circular cross section, and
wherein the storage compartment comprises a plastic material;
[b] an aerosol outlet disposed proximate to the top end of the
storage compartment;
[c] a heater chamber disposed proximate to the bottom end of
the storage compartment, the heater chamber comprising a
heating element configured to aerosolize the vaporizable
material, when the vaporizable material is present, to form an
aerosol;
[d] a first electrical contact and a second electrical contact each
configured and disposed to couple and complete an electrical
circuit with a third electrical contact and a fourth electrical
contact in a receptacle of a vaporizer device body, the electrical
circuit configured to provide power to the heating element
when the vaporizer device body is present;
[e] an aerosol channel within the storage compartment, the
aerosol channel extending from the heater chamber to the
aerosol outlet, the aerosol channel configured so that the
aerosol, when the aerosol is present, is inhalable through the
aerosol channel;
[t] a first exterior wall extending between the top end and the
bottom end;
a second exterior wall extending between the top end and the
bottom end, wherein the first exterior wall and the second
exterior wall are respectively intersected by the two short sides
of the non-circular cross section;
[g] a first locking gap disposed within six millimeters from the
bottom end of the storage compartment and formed within the
first exterior wall, the first locking gap configured to engage
with a first locking detent within the receptacle of the vaporizer
device body when the vaporizer device body is present,
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PUBLIC VERSION
wherein a height of a first interior wall of the vaporizer device
body comprising the first locking detent is at least thirteen
millimeters; and
a second locking gap disposed within six millimeters from the
bottom end of the storage compartment and formed within the
second exterior wall, the second locking gap configured to
engage with a second locking detent within the receptacle of
the vaporizer device body when the vaporizer device body is
present, wherein a height of a second interior wall of the
vaporizer device body comprising the second locking detent is
at least thirteen millimeters. 	'
JX-0004 ('915 Patent), claim I.29
Claims l(p)-[a)
The JUULpod is a cartridge for an ENDS system. See CX-0016C (Alarcon WS)
QIA 507. The JUULpod practices element 1[a] because it has a storage compartment that
holds a vaporizable material, namely, the liquid nicotine solution. See CX-1222 (JUUL
Photo Set 5). The storage compartment has a non-circular cross-section having two long
sides and two short sides. The two "long sides" have a larger dimension than the two
"short sides." The storage compartment also has a top end and a bottom end that is
opposite the top .end along a first dimension. See CX-1222 (JUUL Photo Set 5). The
storage compartment of the JUULpod is made of plastic. See CX-1222 (JUUL Photo Set
5). For all these reasons, the JUULpod practices element l[a]. See CX-0016C (Alarcon
WS) Q/A 508.
Claim l(b)
The JUULpod satisfies element 1[b]. In use, the· JUULpod·generates an aerosol.
29 JLI has given a letter designation for each element of the asserted independent claims.
The letter designations used for the elements of this claim is different for technical prong
and validity analysis. The administrative law judge is adopting the different letter
designations as appropriate.
235

PUBLIC VERSION
This aerosol exits the storage compartment at one opening near the top end of the storage
compartment. This opening is the claimed aerosol outlet disposed proximate to the top
end of the storage compartment. See CX-0016C (Alarcon WS) Q/A 509.
Claim Uc)
The nJULpod satisfies element l[c]. As shown in CX-1222 (nJUL Photo Set 5),
the nJULpod includes a heater chamber that is disposed proximate to the bottom end of
the storage compartment. See CX-1222 (nJUL Photo Set 5). The heater chamber
includes a heating element in the form of a resistive wire coil. See id. 	The nJULpod
contains the claimed heating element. The wire coil transforms electrical energy to heat,
thereby satisfying this element. The nJULpod also includes a pair of plates having
contact tabs. See CX-0369C (JLI Step 1) ; CX-0379C (JLI Product Image Step 13); CX-
0377C (JLI Step 10); CX-0380C (JLI Step 14); CX-0381C (JLI Step 15); CX-0382C (JLI
Step 19); CX-0383C (JLI Step 21); CX-0384C (JLI Step 25); CX-0385C (JLI Step 26);
CX-0386C (JLI Step 27); CX-0387C (JLI Step 28). The contact tabs are integrally
formed with the respective plate and constitute contact tips. See CX-0016C (Alarcon
WS) Q/A 510.
The heating element in the nJULpod is configured to aerosolize the vaporizable
material to form an aerosol. See id. at Q/A 511. As explained above regarding the '669
patent, electrical energy passes from the nJUL device battery through the electrical
contacts to the heating element, which converts the electrical energy to heat. See id. 	The
heating element is wrapped around a wick. The heat from the heating element raises the
temperature of the wick and the vaporizable material within the wick to generate a vapor.
The vapor immediately disperses in air at the heating element, generating an aerosol. See
236

PUBLIC VERSION
id 	Therefore, the JUULpod includes a heating element configured to aerosolize the
vaporizable material per element 1[c]. See id at QIA 513.
Claim l[d)
The JUULpod satisfies element 1[d] , because it contains first and second
electrical contacts. See CX-1222 (JUUL Photo Set 5); CX-0378C (JLI Step 12); CX-
0379C (JLI Product Image Step 13); CX-0389C (JLI Step 5); CX-0446C (JLI Step 15);
CX-0253C (Pod Assembly Overview). These contacts are configured to couple to and
complete an electric circuit with third and fourth electrical contacts located in the
receptacle of the JUUL device, which is a vaporizer device. When the JUULpod is
connected to the JUUL device, the electrical circuit sends power from the battery inside
the device to the heating element. See CX-0016C (Alarcon WS) Q/A 514.
Claim l(e)
The JUULpod satisfies element 1[e] because it has an aerosol channel in the form
of a cannula or tube that runs from the heater chamber to the aerosol outlet. See CX-1222
(JUUL Photo Set 5); CX-0377C (JLI Step 10). The aerosol outlet permits the user to
inhale the aerosol, when present, by permitting the aerosol to travel from the heater
chamber where it is first created to the aerosol outlet and ultimately through the
mouthpiece when suction is applied by the user in the form of an inhalation of breath on
the mouthpiece. See CX-0016C (Alarcon WS) Q/A 515 .
Claim l[fl
The JUULpod satisfies element 1[f] because it has a first exterior wall that
extends between the top end and bottom end of the cartridge. See CX-1222 (JUUL Photo
Set 5); CX-0371C (JLI Step 4); CX-0372C (JLI Step 5); CX-0373C (JLI Step 6); CX-
237

PUBLIC VERSION
0374C (JLI Step 7); CX-0375C (JLI Step 8); CX-0376C (JLI Product Step 9). The
JUULpod also has a second exterior wall extending between the top end and bottom end
of the cartridge. See id 	Both the first and second exterior walls are respectively
intersected by, or in other words coincide with, the two short sides of the non-circular
cross-section. See CX-0016C (Alarcon WS) Q/A 516.
Claim l[g)
The JUULpod satisfies element 1[g] because it has two locking gaps that are
respectively formed within the first and second exterior wall. See CX-1222 (JUUL Photo
Set 5); CX-0371C (JLI Step 4); CX-0372C (JLI Step 5); CX-0373C (JLI Step 6); CX-
0374C (JLI Step 7); CX-0375C (JLI Step 8); CX-0376C (JLI Product Step 9). Each
locking gap is well within six millimeters from the bottom end of the storage
compartment. See CX-1222 (JUUL Photo Set 5). When measuring from the bottom end
of the storage compartment, which is substantially coextensive with the bottom of the
cartridge, the locking gaps are disposed within six millimeters from the bottom end. See
CX-0016C (Alarcon WS) Q/A 517.
The locking gaps are configured to engage with locking detents. The presence of
both locking detents within the receptacle is confirmed by physical inspection of the
JUUL device. See CPX-0001 (JUUL Starter Kit). When the JUULpod is inserted into
the JUUL device, these locking detents are located so that they engage with the locking
gaps on the JUULpod' s exterior walls. Finally, the height of the first and second interior
walls of the JUUL device receptacle that includes the locking detents is at least 13
millimeters. See CX-0016C (Alarcon WS) Q/A 518; CX-1222 (JUUL Photo Set 5).
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PUBLIC VERSION
2. 	Dependent Claim 6
Asserted claim 6 is recited below:
4. The cartridge of claim 1, further comprising:
a mouthpiece comprising the ae osol outlet, wherein the first
exterior wall has a first point between the bottom end of the
storage compartment and the top end of the storage
compartment, wherein the second exterior wall has a second
point between the bottom end of the storage compartment and
the top end of the storage compartment, wherein the
mouthpiece terminates in a distal edge, and wherein the distal
edge of the mouthpiece is disposed at the first point and the
second point.
6. The cartridge of claim 4, further comprising:
a first mouthpiece detent on the first exterior wall proximate to
the first point; and
a second mouthpiece detent on the second exterior wall
proximate to the second point, wherein the mouthpiece is
secured to the storage compartment by the first detent and the
second detent.
JX-0004 ('915 Patent), claims 4, 6.
Claim 6 depends from claim 4, which in turn depends from claim 1. As explained
above, the JUULpod practices every element of claim 1. See CX-0016C (Alarcon WS)
Q/A 521-522. The JUULpod practices claim 4 because it includes a mouthpiece that
itself includes an opening forming the aerosol outlet. See id at Q/A 523. Additionally,
the JUULpod has first and second points located on the first and second exterior walls,
respectively, and between the bottom and top ends of the storage compartment. vCX-
1222 (JUUL Photo Set 5); CX-0369C (JLI Step 1); CX-0370C (JLI Step 2); CX-0388C
(JLI Image). The mouthpiece terminates in a distal edge at the first and second points.
CX-0016C (Alarcon WS) Q/A 524. The JUULpod practices claim 6 because it includes
frrst and second mouthpiece detents on the frrst and second exterior walls, respectively.
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See id at Q/A 525; CX-1222 (JUUL Photo Set 5); CX-0371C (JLI Step 4); CX-0372C
(JLI Step 5); CX-0373C (JLI Product Step 6); CX-0374C (JLI Step 7); CX-0375C (JLI
Step 8); CX-0376C (JLI Product Step 9). Further, the mouthpiece contains openings on
its sides that engage with the first and second mouthpiece detents to secure the
mouthpiece to the storage compartment. See CX-0016C (Alarcon WS) Q/A 526.
3. 	Dependent Claim 15
Asserted claim 15 is recited below:
15 . The cartridge of claim 1, further comprising: a wick configured
to draw the vaporizable material towards the heating element,
wherein the heating element is in thermal contact with the wick.
JX-0004 (' 915 Patent), claim 15.
Claim 15 depends from claim 1. As explained above, the JUULpod practices
claim 1. See CX-0016C (Alarcon WS) Q/A 527. Claim 15 requires "a wick configured
to draw the vaporizable material towards the heating element, wherein the heating
element is in thermal contact with the wick." See id. at Q/A 568. The JUULpod
practices claim 15 because it includes a wick as claimed. See CX-1222 (JUUL Photo Set
5); CX-0380C (JLI Step 14); CX-0381C (JLI Step 15); CX-0382C (JLI Step 19); CX-
0383C (JLI Step 21); CX-0384C (JLI Step 25); CX-0385C (JLI Step 26); CX-0386C (JLI
Step 27); CX-0387C (JLI Step 28). The wick is located such that it is in contact with the
vaporizable material and also proximate to the heating element. See CX-0016C (Alarcon
WS) Q/A 529. Specifically, the heating element is wrapped around the central portion of
the wick, which is sufficient for the heating element to be in thermal contact with the
wick. See id 	The ends of the wick contact the vaporizable material, and draw the
vaporizable material inward toward the center, which causes the vaporizable material to
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be drawn toward the heating element. See id.
4. 	Dependent Claim 18
Asserted claim 18 is recited below:
18. The cartridge of claim 1, further comprising the vaporizable
material, wherein the vaporizable material comprises a liquid
nicotine formulation.
JX-0004 ('915 Patent), claim 18.
Claim 18 depends from claim 1 and adds that ''the vaporizable material comprises
a liquid nicotine formulation. " See id. at Q/A 531. The JUULpod practices claim 18
because the storage compartment of the JUULpod contains a liquid, and this liquid is a
nicotine-containing liquid. See CX-1222 (JUUL Photo Set 5). The JUUL packaging
indicates that the vaporizable material contains "nicotine," and is therefore a liquid
nicotine formulation. See CX-0016C (Alarcon WS) Q/A 532.
5. 	Independent Claim 21
Asserted claim 21 is recited below:
21. [p] An apparatus comprising:
[a] a vaporizer device body comprising:
a receptacle;
a third electrical contact and a fourth electrical contact
disposed within the receptacle;
a first locking detent and a second locking detent within the
receptacle; and
a first interior wall and a second interior wall within the
receptacle, wherein each of the first interior wall and the
second interior wall are at least thirteen millimeters in
height, wherein the first interior wall and the second
interior .wall respectively comprise the first locking detent
and the second locking detent; and
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[b] a cartridge having a bottom end and a top end opposite the
bottom end along a first dimension, the cartridge comprising:
a storage compartment configured to hold a vaporizable
material, the storage compartment having a non-circular
cross section, wherein the non-circular cross section
includes two short sides and two long sides, the two short
sides being shorter than the two long sides to result in the
non-circular cross section, and wherein the storage
compartment comprises a plastic material;
[c] an aerosol outlet at the top end of the cartridge;
[d] a heating element proximate to the bottom end of the
cartridge, the heating element configured to aerosolize the
vaporizable material to form an aerosol for delivery
through the aerosol outlet;
[e] a first electrical contact and a second electrical contact
configured and disposed to couple and complete an
electrical circuit with the third electrical contact and the
fourth electrical contact, the electrical circuit configured to
provide power to the heating element;
[f] a first exterior wall and a second exterior wall extending
between the top end and the bottom end, wherein the first
exterior wall and the second exterior wall are respectively
intersected by the two short sides of the non-circular cross
section;
[g] a first locking gap disposed within six millimeters from
the bottom end of the storage compartment and formed
within the first exterior wall, the first locking gap
configured to engage with the first locking detent; and
a second locking gap disposed within six millimeters from
the bottom end of the storage compartment and formed
within the second exterior wall, the second locking gap
configured to engage with the second locking det~nt.
JX-0004 ('915 Patent), claim 21. 30
Claim 21 is similar to claim 1, but requires both a vaporizer device and a
30 JLI has given a letter designation for each element of the asserted independent claims.
The letter designations used for the elements of this claim is different for technical prong
and validity analysis. The administrative law judge is adopting the different letter
designations as appropriate.
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cartridge. See CX-0016C (Alarcon WS) Q/A 533. The combination of the JUUL device
and JUULpod is an apparatus as shown in CX-1222 (JUUL Photo Set 5). See CX-0016C
(Alarcon WS) Q/A 534. The JUUL system practices element 21[a] because it includes
the JUUL device, which is a vaporizer device comprising a receptacle with locking
detents. See CX-1222 (JUUL Photo Set 5); CX-0389C (JLI Step 5); CX-0446C (JLI Step
15); CX-0371C (JLI Step 4); CX-0372C (JLI Step 5); CX-0373C (JLI Product Step 6);
CX-0374C (JLI Step 7); CX-0375C (JLI Step 8); CX-0376C (JLI Product Step 9). The
height of the interior walls is at least 13 millimeters. See id.; CX-0016C (Alarcon WS)
Q/A 539. Each of elements 21[b] through 21[g] is materially identical to each of
elements l[a] through l[g], respectively, and read on the JUUL device and cartridge for
the same reasons discussed above. See id. at Q/A 535-537; CX-1222 (JUUL Photo Set
5); CX-0369C (JLI Step 1); CX-0379C (JLI Step 13); CX-0377C (JLI Step 10); CX-
0380C (JLI Step 14); CX-0381C (JLI Step 15); CX-0382C (JLI Step 19); CX-0383C (JLI
Step 21); CX-0384C (JLI Step 25); CX-0385C (JLI Step 26); CX-0386C (JLI Step 27);
CX-0387C (JLI Step 28); CX-0253C (Pod Assembly Overview); CX-0378C (JLI Step
12); CX-0389C (JLI Step 5); CX-0446C (JLI Step 15); CX-0371C (JLI Step 4); CX-
0372C (JLI Step 5); CX-0373C (JLI Step 6); CX-0374C (JLI Step 7); CX-0375C (JLI
Step 8); CX-0376C (JLI Product Step 9); CX-0449C (JLI PDF).
VIII. 	Other Issues
A. 	Secondary Considerations for the Asserted Patents
The objective evidence, also known as "secondary considerations," includes
commercial success, long felt need, and failure of others. See Graham v. John Deere
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Co. , 383 U. S. 1, 13-17 (1966); Dystar Te xtilfarben GmbH v. CH Patrick Co., 464 F.3d
1356, 1361 (Fed. Cir. 2006). " [E]vidence arising out of the so-called ' secondary
considerations' must always when present be considered en route to a determination of
obviousness." Stratojlex, Inc. v. Aeroquip Corp. , 713 F.2d 1530, 1538 (Fed. Cir. 1983).
Secondary considerations, such as commercial success, will not always dislodge a
determination of obviousness based on analysis of the prior art. See KSR Int '/ Co. v.
Teleflex Inc. , 550 U.S. 398, 426 (2007) (commercial success did not alter conclusion of
obviousness).
* * *
As discussed above in previous sections of this initial determination, Eonsmoke
has not shown that any of the asserted claims of the four asserted patents are invalid as
either anticipated or obvious in light of the prior art. Further, secondary considerations of
non-obviousness illustrate the validity of the asserted claims. As discussed below, the
administrative law judge finds that there is some record evidence of secondary
considerations that supports non-obviousness of the asserted claims.
Long-felt, unmet need and failure of others
Electronic cigarettes have been in development and on the market for decades, but
there remained a long-felt and unmet need for a reliable commercial product that
provided an alternative to combustible cigarettes. See CX-1353C (Alarcon Rebuttal WS)
at QIA 222. Existing products were not helping smokers stop, as indicated by such high
rates of failure in smoking cessation. See CX-1353C (Alarcon Rebuttal WS) at Q/A 225.
Companies have been attempting to develop a successful ENDS product since the
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PUBLIC VERSION
1960s. See CX-0250.0003-.0004 (Tolentino Article); see also CX-1353C (Alarcon
Rebuttal WS) at Q/A 225; CX-1352C (Collins Rebuttal WS) at Q/A 310. For example,
in the 1980's, companies such as Philip Morris and R.J. Reynolds reportedly invested
billions of dollars in developing alternative heat-not-bum products. See CX-
0250.0003-.0004 (Tolentino Article); CX-1353C (Alarcon Rebuttal WS) at Q/A 225.
However, these earlier ENDS products were not successful. See CX-0250.0004
(Tolentino JUUL Article); CX-1352C (Collins Rebuttal WS) at Q/A 312; CX-1353C
(Alarcon Rebuttal WS) at Q/A 227.
There were also early e-liquid based ENDS products that were created as an
alternative to combustible cigarettes. These e-liquid based products included cigarette-
like e-cigarettes, also known as "cigalikes" arrived on the market in the 2000s. Those
devices were also cylindrical like a traditional cigarette. See CX-0013C (Bowen WS) at
Q/A 39; CX-1352C (Collins Rebuttal WS) at Q/A 311; CX-1353C (Alarcon Rebuttal
WS) at QIA 226. Starting in the late 2000s, three different types of e-cigarettes started
entering the market. The first type entered the market around 2009 and included a
replaceable atomizer, a refillable liquid reservoir, and a battery. Users had to fill the
liquid reservoir themselves with liquid nicotine. These types of products were also
cylindrical, and attached by a 510 threaded connection. See id at Q/A 40; CX-1352C
(Collins Rebuttal WS) at Q/A 311; Alarcon Tr. 454-455.
By 2010, mechanical "mods" came on the market. See CX-0013C (Bowen WS)
at Q/A 40. Mechanical mods are devices without any circuitry that are powered by a
battery, so the device continues to run and heat until the battery dies. There was no way
to tum the system and heater off. They were big and unwieldy, and also required users to
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PUBLIC VERSION
purchase liquid nicotine separately and fill the device themselves. See id. By 2013, box
mods entered the market. Box mods are large box-shaped devices requiring more battery
power. See id. These devices were bulky and had cylindrical liquid reservoirs that users
had to fill themselves. At no point prior to the introduction of JLI's JUUL system were
there other e-cigarettes on the market that worked like the JUUL system or looked like
the JUUL system. See CX-0013C (Bowen WS) at Q/A 40; CX-1352C (Collins Rebuttal
WS) at Q/A 311-313. In sum, various e-cigarette devi'ces existed for years by the time of
JLI' s entry into the market. They had collectively failed to gain consistent adoption due
to a variety of issues related to form, construction, quality, and customer satisfaction. See
CX-1352C (Collins Rebuttal WS) at Q/A 312; CX-1353C (Alarcon Rebuttal WS) at Q/A
227.
Dr. Collins opines that the JUUL system, which embodies and is coextensive with
the asserted claims of the asserted patents, is an ENDS product that is very different from
products that existed in the marketplace before the asserted patents. See CX-1352C
(Collins Rebuttal WS) at Q/A 313-14; CX-1353C (Alarcon Rebuttal WS) at Q/A 228.
Furthermore, JLI' s product has gained significant market traction and demand has
increased. See CX-1354C (Mulhern Rebuttal WS) at Q/A 18-19.
Industry skepticism and unexpected results
At first, the combustible tobacco industry reacted to the JUUL system with
skepticism and sales were flat. One of the early investors in Ploom and Pax was a
company called Japan Tobacco. After initially backing Ploom and Pax' s heat-not-bum
efforts, Japan Tobacco withdrew as an investor in 2015 after the company shifted focus
to thee-liquid based JUUL system because [
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PUBLIC VERSION
). See CX-0013C (Bowen WS) at Q/A 52.
Many in the industry did not think the JUUL system would work technologically.
Making a reliable, easily manufactured, user-friendly device with such a compact
structure was unique and challenging because there was nothing like it on the market.
Devices at the time were larger, allowing for more space to fit all the circuitry and
electrical components. See id at Q/A 43. Considering the close proximity of the heating
element to the interior wall of the tank, some expected there would be damage to the
interior surfaces of the tank. However, the JLI system avoided such damage due at least
in part to the heater configurations claimed in the ' 130 and ' 568 patents. See CX-1352C
·(Collins Rebuttal WS) at Q/A 316-17.
The inventors needed to overcome serious challenges in developing the JUUL
system. JLI sought to develop a simple, reliable, and highly manufacturable system, and
the innovative features had to integrate with each other. For example, achieving an
adequate connection between the device and pod without using typical screw-in
connectors that most previous systems used was not a simple solution. See CX-1352C
(Collins Rebuttal WS) at Q/A 318; CX-0013C (Bowen WS) at Q/A 38, 44, 45. Securing
a pod easily and reliably in a device without the screw attachments was uncertain. Many
forces act on the pod, including aspects of system like the mouthpiece and the contact
tabs, and outside forces like user activity. These forces could dislodge the pod or disrupt
the connection and the electrical circuit through the contact tabs to the heater and battery.
The product needed a locking system to secure the pod in the device that would also
allow users to easily remove the pod out of the device, while maintaining steady and
efficient airflow when the system was assembled. The JUUL system uses a locking gaps
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PUBLIC VERSION
system to overcome these concerns. This improved the ease of installation, allowing
users to quickly and easily swap out pods into the device. See CX-0013C (Bowen WS) at
Q/A44.
In developing the locking gaps mechanism, the inventors had to remain mindful
of and accommodate other significant challenges, such as the electrical connection
between the pod and the device. Given the compact structure, there were concerns about
constructing an electrical contact that would make an efficient electrical connection.
Prior e-cigarette devices used the screw connection between the pod and the device to
ensure a secure and consistent electrical connection. The JUUL system could not use this
type of screw attachment to fit the compact structure. In combination with the locking
gap connection, the inventors developed folded-over contact tabs. The integral folded-
over contact tabs provide a large and accessible contact surface to ensure a secure
electrical connection when the locking gaps of the JUULpod are engaged with the detents
of the JUUL device. See id. at Q/A 45.
Heat dissipation was also a challenge given the narrow structure of the device.
The JUUL system includes a compact heater with paired plates in the narrow pod. The
paired plates are space-efficient but also act as a heat sink and/or heat shield that absorbs
and dissipates excess heat produced by the heating element. This prevents damage to the
pod and the device caused by excess heat. There was also a concern for the ease of
manufacturing and, of course, reliability. The integrally formed contact tabs, for
example, reduced the number of required components and electrical connections,
improving both manufacturability and reliability. See id. at Q/A 46.
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Industry praise and widespread acceptance after invention
The JUUL system has received widespread recognition from its customers and
others in the industry, which further evidences the nonobviousness ·of the patented
features. See CX-1352C (Collins Rebuttal WS) at Q/A 319-21; CX-1353C (Alarcon
Rebuttal WS) at Q/A 233. For example, Bloomberg has called the JUUL system a
"runaway success" and called the JUUL system the leading alternative for adult smokers.
See CX-0392.0002 (Bloomberg Article (Zaleski)). Business Insider called the JUUL
system the ".iPhone of vaporizers" and highlighted the JUUL system's compact form
factor as being a factor for its popularity. See CX-0394.0001 (Business Insider
(Robinson)). Similarly, Wells Fargo highlighted JLI's "Apple-like approach" and
credited the JUUL system's "ease of use," and its "long, lean, lightweight build" as
factors for the JUUL system's success. See CX-0367.0001, .0009 (Wells Fargo Article).
JLI has received numerous design awards for the JUUL system. For example, the
patented JUUL system's innovative construction received the San Francisco Design
Award, the International Design Award, and the iF International Forum Design Award.
See CX-0225 (2016 San Francisco Design Award); CX-0226 (2015 International Design
Award); and CX-0227 (2016 iF International Forum Design Award); CX-0013C (Bowen
WS) at Q/A 47-48.
The JUUL system has received extensive praise from competitors, including some
respondents in this investigation. See CX-1354C (Mulhern Rebuttal WS) at Q/A 34-42.
Commercial success
JLI' s share of the ENDS market has grown quickly from [
]. See CX-1354C (Mulhern
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PUBLIC VERSION
Rebuttal WS) at Q/A 25-31.
JLI' s domestic investments are the largest in the market, and those investments
support sales volumes that exceed the volumes of all other respondents combined. As
discussed below with respect to the economic prong of the domestic industry
requirement, JLI' s and its contract manufacturers' investments in plant and equipment
allocable to the domestic industry products ("DI Products") include assets with an
allocated book value of$ [ 	] and $ [ 	] of operating expenses. See
CX-0017C (Mulhern WS) Q/A 36; CX-0735C (Corrected DI Investment Summary); CX-
0457C (P&L 2016-Q2 2018); CX-0465C (JLI P&L 2018); CX-0836C (CM Income
Statements); CX-0835 (CM Capital Assets); CX-0837C (CM Annual Sales Summary).
[
JLI' s and its contract manufacturers' investments in labor and capital allocable to
the DI Products total [ 	). See CX-0017C (Mulhern WS) Q/A
256; CX-0457C (P&L 2016 - Q2 2018); CX-0465C (JLI P&L 2018); CX-0836C (CM
Income Statements).
Copying
A number of competitors, including some respondents, have admitted to using the
JUUL system as a reference when manufacturing their own ENDS products. The Ziip
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PUBLIC VERSION
respondents31 [
]. See CX-1353C (Alarcon
Rebuttal WS) at Q/A 240; CX-0020C (Shelton Designations (Apr. 2019)) 40-41 , 148,
154. The Ziip respondents have indicated that it would have been "impossible" to design
the Ziip JUUL-compatible products if they did not have the JUUL system "as a point of
reference." See CX-0033C (Shelton Designations (May 2019)) 78.
JLI's Affirmative Evidence Specific to Nexus
JLI has shown that the patented features of the JUUL system have contributed to
its success in the marketplace. See CX-1354C (Mulhern Rebuttal WS) at Q/A 43.
Claims of the asserted patents are coextensive with the JUUL system, including the filled
JUULpod (a cartridge) and the JUUL device (a vaporizer device body or vaporizer), and
relate to their technical design and features. See id. at Q/A 44; CX-1352C (Alarcon
Rebuttal WS) at Q/A 303-306 (' 130 and ' 568 patents); CX-1353C (Alarcon Rebuttal
WS) at Q/A 220, 221 , 246 (' 669 and ' 915 patents). Indeed, JLI's expert testimony
regarding coextensive scope of the asserted patents is unrebutted by respondent's expert,
Mr . Flolid, who admitted that he did not consider any objective indicia evidence. Flolid
Tr. 288.
The ' 568 and ' 130 patents recite, among other features, paired metal plates as part
of the heating assembly with integrated, folded-over contact tabs. See CX-0015C
31 The "Ziip respondents" refer to respondents ZLab S.A.; SS Group Holdings; and
Shenzhen Yibo Technology Co ., Ltd. As noted, on November 19, 2019, the
administrative law judge issued an initial determination granting a joint motion to
terminate the investigation as the Ziip respondents based on a settlement agreement. See
Order No. 39.
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PUBLIC VERSION
(Collins WS) at QIA 4 7-50, 315-316; CX-1352C (Collins Rebuttal WS) at QIA 315-318,
324-333. The ' 568 and the ' 130 patents provide improved heat shielding, enabling a
narrow and space-efficient structure, which results in a technical design with compact
overall dimensions that is easier for consumers to use. See CX-0015C (Collins WS) at
QIA 47, 50; CX-1352C (Collins Rebuttal WS) at QIA 316-318, 324-333; Collins Tr. 480-
481. The technologies of the ' 568 and ' 130 patents also help minimize the potential
failure of the pod, making the JUUL system more reliable. See CX-1352C (Collins
Rebuttal WS) QIA 315, 324-334; CX-1354C (Mulhern Rebuttal WS) at QIA 47.
The ' 915 patent recites, among other features, use oflocking gaps to securely
attach thee-liquid-filled pod with the device. See CX-0016C (Alarcon WS) at QIA 38;
CX-1353C (Alarcon Rebuttal WS) at QIA 28, 30-32, 135. The claimed features relate to
attaching the filled JUULpods to the JUUL device, and provides consumers with
convenience and ease of use, especially relative to prior threaded connection
mechanisms. See CX-1353C (Alarcon Rebuttal WS) at QIA 30. As a result of the ' 915
patented technology, together with the folded-over contact technology of the ' 568 patent,
the JUUL system includes an easily releasable connection between the pod and the
device, which is secure and reliable, and easy for a user to install. See CX-1353C
(Alarcon Rebuttal WS) at Q/A 30, 232; Alarcon Tr. 456; CX-0013C (Bowen WS) at QIA
38, 44, 45 ; Bowen Tr. 111. The claimed locking gap configuration in collaboration with
the folded-over contact feature of the ' 568 patent, which are embodied in the JUULpod,
allow a user to easily couple the cartridge to the device by merely sliding the cartridge
relative to the device- 	without twisting the cartridge as required with a threaded
connection. See CX-1353C (Alarcon Rebuttal WS) at QIA 30; CX-0013C (Bowen WS)
I
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PUBLIC VERSION
at Q/A 38, 44, 45; Bowen Tr. 111.
The ' 669 patent recites, among other features, a notched mouthpiece that enables
a user to see thee-liquid remaining in the pod, both prior to and during use. See CX-
0016C (Alarcon WS) at Q/A 37; CX-1353C (Alarcon Rebuttal WS) at Q/A 28-30, 34,
231 ; CX-1354C (Mulhern Rebuttal WS) at Q/A 48-50. The ability to see remaining e-
liquid benefits consumers by making consumers aware when pods are empty or near
empty, thereby contributing to ease of use and avoidance of possible dry hits. See CX-
1353 C (Alarcon Rebuttal WS) at Q/A 28-30; Mulhern Tr. 546.
The claimed features ofthe ' 669 patent, the ' 568 patent, the ' 130 patent, and the
' 915 patent are coextensive with thee-liquid based JUUL system. Each of the asserted
patents recites core components of an e-liquid based cartridge that contributed to the
overall function of the JUUL system. The features in the asserted patent are among the
innovations that are integrated together into a cohe~ive system that delivers the overall
user experience JLI pioneered. While each asserted patent recites different inventive
aspects of an e-liquid based system, each patent claims inventive features that are
coextensive with the entire product.
JLI' s expert, Ms. Mulhern, analyzed the extent to which the patented features
contribute to the marketplace success of the JUUL system, evidence from JLI market
research, JUUL sales and promotional materials, and the survey performed by
respondents' expert Dr. Thomas Maronick. 32 See CX-1354C (Mulhern Rebuttal WS) at
32 It appears that Dr. Maronick' s witness statement was prepared on behalf of the
respondents who participated in the evidentiary hearing, i.e. , Vapor 4 Life Holdings, Inc.;
Ziip respondents; and Eonsmoke. As noted, on November 19, 2019, the administrative
law judge issued initial determinations granting joint motions to terminate the
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QIA 54. As discussed below, from an economic perspective, market research such as
consumer surveys, provides evidence of the factors that contribute to demand for the
JUUL system. Similarly, JLI's sales and promotional materials for the JUUL system
would be expected to emphasize the features that are important to consumers and, thus,
contribute to the purchase decision. See id. at Q/A 55 .
JLI market research
JLI' s market research appears to support the conclusion that the benefits of the
features enabled by the asserted patents--ease of use, technical design, and reliability-
are among those described by consumers as important to the purchase decision. See id. at
Q/A 56. Ms. Mulhem' s opinion is based in part on a consumer survey conducted by JLI
from June to July 2018 that probed for the factors that impactconsumers' purchase
decisions, and asked consumers to identify which e-cigarette brand was their "most
preferred." Respondents were then asked a follow-up question to determine why a
particular brand was their most preferred. See id. at Q/A 57.
Survey respondents who indicated that JUUL was their most preferred brand were
asked the reason for their preference, and the most frequent response was because "[i]t's
easy to use," with a majority of respondents indicating the importance of ease of use. See
CX-1354C (Mulhern Rebuttal WS) at Q/A 58-59. The second-most frequent response to
that question was JUUL system' s design. Moreover, approximately a third of
respondents indicated the reason they most preferred JUUL was 1:>ecause "[i]t's the most
investigation as to Vapor 4 Life and Ziip respondents based on settlement agreements.
See Order Nos. 38, 39.
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reliable." See id. 	These consumers thus identified the benefits of the patented features as
contributors to their decision to purchase the JUUL system. This data provides evidence
of the nexus between the asserted patents and the marketplace success of the JUUL
system. See CX-1354C (Mulhern Rebuttal WS) at Q/A 60-61; CX-0327 (JLI Q2 2018
Business Presentation).
JUUL sales and promotional materials
As with the JLI market research, JUUL sales and promotional materials also
highlight the benefits of the patented features. See CX-1354C (Mulhern Rebuttal WS) at
Q/A 65-67; see, e.g., CX-0735C (Corrected DI Investment Summary); CX-0713C
(Corrected Labor & Capital Summary (2016-2018)); CX-0457C (P&L 2016 - Q2 2018);
CX-0465C (JLI P&L 2018); CX-0836C (CM Income Statements); CX-1323C (Rental
Spreadsheet); CX-1325C (Modification Spreadsheet); CX-1326C (Employee Spreadsheet
CM Document); CX-0792C (JLI Headcount 2017-2018); CX-0819C (Email re: Pricing
Review and Attach); CX-0649 (JLI Getting Started Screenshot 2); CX-0648 (JLI
Learning About Device Screenshot); CX-0650 (JUULpod Basics Screenshot); CX-0601
(JLI Device Basics Screenshot); CX-0647 (JUUL Community Screenshot); CX-0654
(JLI Quality & Standards Screenshot).
Ms. Mulhern reviewed customer product reviews from JLI's website. See CX-
13 54C (Mulhern Rebuttal WS) at QIA 68. The customer product reviews appear to
confirm that the patented features are important to consumers, with multiple references to
the technical design and ease of use of the JUUL system. See CX-1354C (Mulhern
Rebuttal WS) at Q/A 68-70; CX-0464C (JLI Assets 12/31/2018); CX-0337C (2018-12-06
COGS Analysis); CX-0837C (CM Annual Sales Summary); CX-0830C (JLI Excel
255

PUBLIC VERSION
Spreadsheet); CX-0014C (Danaher WS) at Q/A 20; CX-0462 (JLI Starter Kit Screenshot
4); CX-0459 (JLI Starter Kit Screenshot 1); CX-0463 (JLI Starter Kit Screenshot 5); CX-
0461 (JLI Starter Kit Screenshot 3); CX-0460 (JLI Starter Kit Screenshot 2).
* * *
Accordingly, the administrative law judge finds that there is some record evidence
of secondary considerations that supports non-obviousness of the asserted claims.
B. Inequitable Conduct
Eonsmoke did not raise inequitable conduct as an affirmative defense in response
to the complaint. 33 Eonsmoke made the following vague statement in its prehearing
brief, "Eonsmoke joins in all issues to be presented by its co-Respondents, including
particularly the patent invalidity contentions set forth herein by Ziip." Ziip and
Eonsmoke P.H. Br. at 3. Eonsmoke did not specifically raise or brief inequitable conduct
in its pre-hearing brief. 34
After the hearing, the respondents did not file a consolidated brief. Eonsmoke did
not include a discussion of inequitable conduct in its initial post-hearing brief, or its reply
33 See 19 C.F.R. § 210.13(b) (concerning the pleading of defenses, including affirmative
defenses).
34 Ground Rule 7.a provides in part: "A statement of the issues to be considered at the
hearing that sets forth with particularity a party's contentions on each of the proposed
issues, including citations to supporting facts and legal authorities, e.g., proposed
exhibits. Incorporation by reference is not allowed. Any contentions not set forth in
detail as required therein shall be deemed abandoned or withdrawn, except for
contentions of which a party is not aware and could not be aware in the exercise of
reasonable diligence at the time of filing the prehearing statement."
256

PUBLIC VERSION .
brief. Eonsmoke did not indicate in the Comprehensive Joint Outline of issues to be
decided in the final Initial Determination filed in connection with the parties' 'initial post-
hearing briefs (8/23/2019) or Comprehensive Joint Outline filed in connection with the
parties' reply briefs (9/3/2019) that it had an inequitable conduct defense. See Ground
Rule 11.a ("On the same day the initial posthearing briefs are due, the parties shall file a
comprehensive joint outline of all of the issues, including sub-issues, to be decided in the
final Initial Determination. * * * The outline shall refer to specific sections and pages of
the posthearing briefs." (emphasis in original)).
In the later Comprehensive Joint Outline for the parties' reply briefs that was filed
with the expectation that Eonsmoke may be the only remaining respondent (10/23/19),
Eonsmoke indicated in footnote: "Eonsmoke' s position is that it preserved the issue of
inequitable conduct by joining V4L' s contentions in the pre-hearing briefing and at the
August 2019 hearing. Any failure to incorporate the inequitable conduct arguments in
the post-hearing briefing was an oversight which should be excused given the importance
of the issue to the merits." In that footnote, JLI and the Staff opposed Eonsmoke' s
position.
Vapor 4 Life Holdings, Inc. ("V4L") has settled with JLI. V4L was the only party
to assert an affirmative defense of patent unenforceability due to inequitable conduct.
V4L was the only party to file post-hearing briefing on that is.sue, pursuant to 19 C.F.R. §
210.4. There is no basis to attribute V4L' s briefing to Eonsmoke. Accordingly, alleged
unenforceability due to inequitable conduct is not an issue to be decided in this
investigation.
257

PUBLIC VERSION
IX. 	Domestic Industry (Economic Prong)
For the reasons discussed below, the record evidence supports a finding that JLI's
domestic activities: (1) add significant value to its domestic industry products; and (2) are
significant in the context of its worldwide operations. The evidence shows that JLI has
made and continues to make significant U.S. investments in plant, equipment, labor and
capital under 19 U.S.C. § 1337(a)(3)(A) and (B).
Overview of JLl's Operations
Consumers can purchase a JUUL Basic Kit containing a device and charger, a
Refill Kit containing two or four filled pods of various flavors' and nicotine strengths, or a
Starter Kit containing a Basic Kit and a Refill Kit with four pods of different flavors. See
CX-0014C (Danaher WS) Q/A 9. The Starter Kit retails for $49.99, the Basic Kit retails
for $34.99, and the Refill Kit retails for $9.95 for a two-pod package and $15.99 for a
four-pod package. See CX-0014C (Danaher WS) Q/A 10. CX-0825 (JLI Excel
Spreadsheet) shows JLI's pricing and margins for the JUUL system as of October 2018.
). See CX-0014C (Danaher WS) Q/A 11. CX-0797C (JLI 2015 Financial Info)
and CX-0793C (JLI 2017 Audited Financial Statements) are financial reports that were
generated before or at the time of the split from Pax Labs. They were used to divide up
the assets between JLI and Pax Labs. See CX-0014C (Danaher WS) Q/A 13.
JLI began selling the JUUL system on June 1, 2015. See CX-0014C (Danaher
WS) Q/A 14. CX-0336C (2016-2018 JUUL Sales) shows sales of the JUUL system from
2016 through 2018. See CX-0014C (Danaher WS) Q/A 15. Extensive survey data shows
sales of the JUUL system relative to other ENDS products from a sample of convenience
258

PUBLIC VERSION
stores on a weekly basis. CX-0813 (JLI Excel Spreadsheet) contains 4-week Nielsen data
from 2016 through November 2018. CX-0458C (IRI 4WK Retailer) contains 4-week
data from IRI from April 22 through September 9, 2018. CX-0798C (Nielsen Weekly
Retailer) contains weekly Nielsen data from June 23 - July 28, 2018. JLI uses Nielsen
and IRI survey data in the ordinary course of business. See CX-0014C (Danaher WS)
QIA 16.
JLI' s domestic activities include managing contract manufacturers ("CMs")
located both inside and outside of the U.S., performing warranty and customer support,
conducting R&D and engineering, complying with regulations, engaging with scientific
and political groups, and performing sales and administrative activities. See CX-0014C
(Danaher WS) QIA 17. The JUUL system is JLI' s only commercial product in the
United States. See id. at 18.
JLI is based in California, with its headquarters and numerous additional facilities
in San Francisco and an R&D center in Mountain View. See id. at 19. As of September
30, 2018, [ 	]% of JLI's workforce was based in the United States. See CX-0014C
(Danaher WS) QIA 20. CX-1315C (Email re Labor and Attachments) and CX-1316C
(Email re Pricing and Attachments) show JLI's labor and pricing rates. See CX-0014C
(Danaher WS) QIA 21.
JLI and its contractors also have facilities in [ .
). See CX-0014C
(Danaher WS) QIA 17. CX-0792C (JLI Headcount 2017-2018), CX-0465C (JLI P&L
2018), CX-0457C (P&L 2016 - Q2 2018), and CX-0337C (2018-12-06 COGS Analysis)
are spreadsheets containing information from JLI's enterprise resource planning software
259

PUBLIC VERSION
related to profit and loss, operating expenses, headcount, and employee compensation.
See CX-0014C (Danah"er WS) Q/A 19.
Manufacturing
JLI' s supply chain group manages JLI's existing manufacturing lines and the
rollout of additional manufacturing lines, including the activities of all CMs involved.
JLI has [
capacity [
). See CX-0014C (Danaher WS) Q/A 22. JLI' s manufacturing
). As of August, 2018, JLI had [
have [
]. By January 2020, JLI expects to
). See id at Q/A 23.
As of October 3, 2018, [ 	]
manufacture the device and charger and [ 	). The
Basic Kit is imported into the United States and is either sent to a distributor to go out for
retail sale or it is sent to a domestic contract manufacturer to be combined with a Refill
Kit to make a Starter Kit. See id at Q/A 24. The Refill Kit contains pods which are
assembled in [ 	) and imported into the United States where they are filled withe-
liquid using JLI's proprietary automation equipment. Specifically, the empty pods are
assembled using JLI's proprietary assembly equipment. As of October 3, 2018, assembly
was [
). All other
manufacturing activity occurred and continues to occur in the United States, including the
manufacture of e-liquid See id. at QIA 25.
Thee-liquid is- 	and always has been- 	manufactured in the United States by
260

PUBLIC VERSION
JLI' s suppliers, [
]. JLI's supply
chain team in the United States manages all manufacturing activity globally. These
suppliers use formulas and processes that are proprietary to JLI and unique to the JUUL
system. See id. at Q/A 26.
JLI has [ 	] that complete the manufacturing of the pods:
[
] use equipment designed and purchased by JLI to fill the empty
pods withe-liquid [
] as Refill Kits for distribution and retail sale. They
also combine Refill Kits and Device Kits to create Starter Kits for retail sale. See id. at
Q/A27 .
The processes used to manufacture the JUUL system [
]. See CX-041 lC (JLI Supply Chain Overview); CX-0452C.(CM Liquid Filling
Process); CX-0453C (CM Vacuum Test Procedure); CX-0454C (CM Machine & Auto
Checkweigher Packaging Instructions); CX-0455C (CM Final Packaging Inspection);
CX-0456C (JLI Overall Testing Process); and CX-0412C (Pax Pod Assembly Overview).
CX-0794C (JUUL Agreement 5), CX-0795C (JUUL Agreement 6), CX-0302C
(JLI-CM Amended Supply Agreement), CX-0303C (JLI-CM Supply Agreement),
CX-0304C (JLI-CM Mfg. and Purchase Agreement), CX-0796C (JUUL Agreement 7),
CX-0305C (JLI-CM Supply and Services Agreement), and CX-0306C (JLI-CM Master
261

PUBLIC VERSION
Services Agreement) show agreements with JLI's contract manufacturers. See CX-
0014C (Danaher WS) Q/A 29. CX-0284 (JLI COPE Worksheet), CX-0285 (JLI COPE
1), CX-0286 (JLI COPE 2), and CX-0287 (JLI COPE 3) show the square footage of
various facilities. See CX-0014C (Danaher WS) Q/A 30.
JLI does not sell the empty pods after importing them. JLI only sells filled pods
that are sealed and packaged for retail sale. For the quality and reliability of the pods, JLI
coordinates activities of JLI and its CMs in the United States. Filling, sealing, packaging,
and quality control are essential to creating a successful and reliable commercial product.
The success of the pod is critical to the success of the system. Consumers of the JUUL
system purchase many more pods than devices, often multiple pods per week. The
devices are [
31.
On October 3, 2018, [
continued to [
]. JLI began a [
]. See CX-0014C (Danaher WS) Q/A
] . Also, JLI has
] .
This proprietary process was invented by JLI in the United States and will [
]. In the fall of 2018, JLI [
] at its Mountain View
facility. It was expected that (
262

PUBLIC VERSION
]. See CX-0014C (Danaher WS) Q/A 32.
[ 	] make investments in facilities, equipment,
and labor to manufacture e-liquid for the JUUL system. For pods, [ 	]
each make investments in facilities and labor to support those efforts, and [
] all the equipment used in this process. See CX-0014C (Danaher WS) Q/A 33.
CPX-0070 (Pod Packaging Video) and CPX-0071(Pod Filling and Sealing Video) show
the domestic filling and packaging operations at [ 	] . The videos walk through the
process and show the equipment used to fill, seal, and package pods for the JUUL
system. The videos show just a portion of one manufacturing line. JLI continues to
invest in [
]. See CX-0014C (Danaher WS) Q/A 34.
CX-0464C (JLI Assets 12/31/2018) is a spreadsheet containing an output from
JLI's ERP software showing all the equipment owned by JLI globally. It contains a
description of each piece, its location, the purchase value, and the book value
(depreciated value) as of December 31, 2018. See CX-0014C (Danaher WS) Q/A 35.
] manufacturing costs
associated with pod manufacturing for the JUUL system as of the date of the email. See
CX-1316C (Email re Pricing and Attachments); CX-0819C (Email re Pricing and
Attachments); CX-0295C (Email re CM Labor Rate); and CX-131 SC (Email re Labor
and Attachments).
Manufacturing costs for [
costs [
263
] are estimated below. These

PUBLIC VERSION
] . See CX-0014C (Danaher
WS) Q/A37.
l l 	[ [
Cost Type ] 	l 	]
] 	]
Material Cost 	$[ 	] 	$[ 	] 	$[ 	] 	$[ 	] 	$[
Freight & Import 	$[ 	] 	$[ 	] 	$[ 	] 	$[ 	] 	$[
Duties
Direct Labor 	$[ 	] 	$[ 	] 	$[ 	] 	$[ 	] 	$[
Indirect Labor 	$[ 	] 	$[ 	] 	$[ 	] 	$[ 	] 	$[
Facilities & 	$[ 	] 	$[ 	] 	$[ 	] 	$[ 	] 	$[
Utilities
Equipment MRO 	$[ 	] 	$[ 	] 	$[ 	] 	$[ 	] 	$[
Miscellaneous 	$[ 	] 	$[ 	] 	$[ 	] 	$[ 	] 	$[
SG&A 	$[ 	] 	$[ 	] 	$[ 	] 	$[ 	] 	$[
Manufacturer 	$[ 	] 	$[ 	] 	$[ 	] 	$[ 	] 	$[
Profit
R&D and Engineering
JLI has an R&D group and an engineering group that are responsible for research
and development for the JUUL system, its manufacturing process, and assisting the
supply chain team with troubleshooting any issues that arise during manufacture. JLI
purchased a [
]
] . See CX-0014C (Danaher
WS) Q/A38.
264
]
]
]
]
]
]
]
]
]

'
PUBLIC VERSION
JLI conducts R&D and engineering activities for the JUUL system at its
headquarters in San Francisco as well as at its R&D facility in Mountain View. In
addition, JLI employees based in the United States, [
] assist
with developing and improving manufacturing equipment and processes. See CX-0014C
(Danaher WS) Q/A 39.
R&D for the JUUL system began prior to its launch in 2015. R&D continues at
JLI today to develop and improve the manufacturing processes for the JUUL system, and
]. JLI R&D efforts also include
mechanical design, electrical and software engineering, vaporization, chemistry, and
developing new features and functionalities of the JUUL system. Additionally, JLI funds
clinical research that furthers its mission.' See CX-0014C (Danaher WS) Q/A 40.
Warranty and Customer Support
JLI has a consumer support department that engages in a variety of customer
support and warranty activities related to the JUUL system in the United States. JLI
invests in labor compensation and in operating expenses for these efforts. See CX-0014C
(Danaher WS) Q/A 41. JLI offers consumers a one-year warranty on JUUL devices for
defects related to materials and workmanship under normal use. [
] .
See CX-0014C (Danaher WS) Q/A 42.
Regulatory Compliance
The ENDS market is a regulated industry, and JLI has invested in facilities,
265

PUBLIC VERSION
equipment, labor, and operating expenses to support its regulatory compliance efforts.
JLI has departments working on regulatory compliance as well as quality, pre-clinical,
clinical, and behavioral research, and youth prevention. As shown in CX-0465C (JLI
P&L 2018), since October 2018, some employees [
]. These
activities all began prior to October 2018. See CX-0014C (Danaher WS) Q/A 43.
Sales and Other Activities
-
JLI has a number of additional departments engaged in activities exclusively for
the JUUL system. The sales team manages distributors and retail accounts, takes orders,
ensures that purchase orders are filled, and conducts strategic analyses of JLI' s
distribution system and pricing issues. JLI also engages in general administrative
activities through its executive team, IT/technical support, legal, human resources,
finance and accounting, facility expansion, and administrative assistance. See CX-0014C
(Danaher WS) Q/A 44.
Total Investments in Plant and Equipment
As of September 30, 2018, JLI owned U.S.-based plant and equipment assets
allocable to the DI Products with a book value of$ [ 	] . Over the period 2016
through September 2018, JLI incurred plant and equipment operating expenses in the
U.S. allocated to the DI Products that totaled$[ 	]. See CX-0017C (Mulhern
WS) at Q/A 90-92, 100-125. In addition to JLI's direct investments, third-party
manufacturers operating under contract with JLI have made additional investments in the
U.S. related to the DI Products in plant and equipment with a book value of equipment
266

PUBLIC VERSION
assets of$ [ 	] around the time of the amended complaint and cumulative
operating expenses totaling at least$ [ 	] over the period 2016 through
September 30, 2018. See CX-0017C (Mulhern WS) at Q/A 93-99, 135-189.
Outside of investments related to sales, marketing, and administrative activities,
JLI and its contractors' investments in plant and equipment fixed assets had a book value
of$ [ 	] as of September 30, 2018, and plant and equipment operating expenses
totaled$[ 	] over the period 2016 through September 2018. See CX-0017C
(Mulhern WS) at Q/A 190.
Total Investments in Labor and Capital
Over the period 2016 through September 2018, JLI's U.S. investments in labor
and capital allocated to the DI Products totaled$[ 	). See CX-0017C
(Mulhern WS) at Q/A 196-218. Third-party contract manufacturers have also made U.S.
investments in labor and capital totaling at least$ [
through September 2018. See id. at Q/A 219-255.
] over the period 2016
Commercial Significance and Context of JLl's Investments
JLI' s investments are significant in the context of the ENDS industry because JLI
is the leading ENDS provider in the United States. At the time of filing the Complaint,
JLI supplied [ 	]% of refill pods for the ENDS market. See CX-1354C (Mulhern
Rebuttal WS) at Q/A 25 . JLI' s domestic investments are therefore the largest in the
market, and those investments support sales volumes that exceed the volumes of all other
respondents combined. JLI's and its contract manufacturers' investments in plant and
equipment allocable to the DI Products include assets with an allocated book value of
$[ 	] and$ [ 	] of operating expenses. See CX-0017C (Mulhern WS)
267

PUBLIC VERSION
at Q/A 36; CX-0735C (Corrected DI Investment Summary); CX-0457C (P&L 2016-Q2
2018); CX-0465C (JLI P&L 2018); CX-0836C (CM Income Statements); CX-1323C
(Rental Spreadsheet); CX-1324C (Asset Spreadsheet); CX-0792C (JLI Headcount 2017-
2018); CX-0464C (JLI Assets 12/31/2018); CX-0830C (JLI Excel Spreadsheet); CX-
08.35 (CM Capital Assets); CX-0837C (CM Annual Sales Summary).
[
]
JLI' s and its contract manufacturers' investments in labor and capital allocable to
the DI products total approximately$ [ 	). See CX-0017C (Mulhern WS) at
Q/A 256; CX-0457C (P&L 2016 - Q2 2018); CX-0465C (JLI P&L 2018); CX-0836C
(CM Income Statements); CX-1323C (Rental Spreadsheet); CX-1324C (Asset
Spreadsheet); CX-0792C (JLI Headcount 2017-2018); CX-0464C (JLI Assets
12/31/2018); CX-0830C (JLI Excel Spreadsheet); CX-0835C (CM Capital Assets); CX-
0837C (CM Annual Sales Summary). Exclusive of sales, marketing, and administrative
activities as shown in CX-0735C (Corrected DI Investment Summary); CX-0457C (P&L
2016 - Q2 2018); CX-0465C (JLI P&L 2018); CX-0836C (CM Income Statements); CX-
1323C (Rental Spreadsheet); CX-1324C (Asset Spreadsheet); CX-0792C (JLI Headcount
2017-2018); CX-0464C (JLI Assets 12/31/2018); CX-0830C (JLI Excel Spreadsheet);
CX-0835C (CM Capital Assets); CX-0837C (CM Annual Sales Summary), these
investments in plant and equipment have an allocated book value of$ [ 	) and
268

PUBLIC VERSION
operating expenses of $[ 	].
The investments in labor and capital exclusive of these activities total$ [
As discussed below, such investments are qualitatively and quantitatively significant.
See CX-0017C (Mulhern WS) at Q/A 257-258.
Qualitative Significance
]
].
JLI' s investments are qualitatively significant for several reasons. JLI, which is a
company valued at approximately $36.6 billion, has been solely dedicated to the
development, manufacturing, and sale of the DI Products, since June 30, 2017. See CX-
0014C (Danaher WS) Q/A 6, 18 ; CX-0017C (Mulhern WS) at Q/A 260. Altria initially
invested $12.8 billion in exchange for a 35% minority ownership in JLI, based on the
$36.6 billion valuation for JLI as a whole. See CX-0598 (JLI Press Release Altria
Minority Investment). Prior to June 30, 2017, JLI's investments in plant and equipment
related to both the JUUL system as well as the PAX system. Since June 30, 2017, when
JLI spun-off all non-JUUL related operations to a separate entity, all JLI's investments in
plant and equipment have been in support of the DI Products, which are JLI's only
products. See CX-0017C (Mulhern WS) at Q/A 262.
The vast majority of JLI's employees are located in the U.S., and are based at its
facilities in San Francisco, California and Mountain View, California. See CX-0017C
269

PUBLIC VERSION
(Mulhern WS) at Q/A 263. The JUUL system was developed in the U. S. , and JLI's
ongoing R&D activities similarly occur primarily in the U.S. See CX-0014C (Danaher
WS) Q/A 39-40. Beginning in 2018, [
]. See CX-0014C (Danaher WS) Q/A 39.
] accounts for only a minority of JLI's current R&D investments. See CX-
0017C (Mulhern WS) at Q/A 266.
Finally, the U.S.-based activities of JLI and its contract manufacturers relate to
critical aspects of the JUUL system. See CX-0017C (Mulhern WS) at Q/A 268. Without
the contributions by JLI and its contract manufacturers in the U.S., such as the
manufacture of thee-liquid and the pod filling and packaging activities, there would not
be a saleable JUUL system. See CX-0017C (Mulhern WS) at Q/A 269.
Although JLI' s devices and empty pods are manufactured by [
] , the research and development of the components and associated manufacturing
processes were conducted by JLI employees in the U.S. See CX-0017C (Mulhern WS) at
Q/A 270. Moreover, the activities conducted by JLI and its contract manufacturers in the
U. S. that are associated with the manufacture of thee-liquid and filling and packaging of
pods, as well as the final packaging of the JUUL system, are critical aspects of the
manufacture of the JUUL system and essential for a saleable product, which supports a
finding of qualitative significance. See id.
Quantitative Significance
As shown in CX-0464C (JLI Assets 12/31/2018), CX-0337C (2018-12-06 COGS
Analysis), CX-0837C (CM Annual Sales Summary), CX-0830C (JLI Excel Spreadsheet),
270

PUBLIC VERSION
CX-0014C (Danaher WS) Q/A 20 , JLI and its contractors' U.S. investments in the DI
Products are significant from a quantitative perspective for several reasons. See CX-
0017C (Mulhern WS) at Q/A 272. Since June 30, 2017, 100% of JLI' s U.S. investments
and activities have been in support of the JUUL system. See id. at Q/A 273 . At the time
of the amended complaint, approximately [ 	]% of JLI's employees were based in the
U.S. See CX-0014C (Danaher WS) Q/A 20. Approximately [ 	]% of JLI's investments
in equipment used to manufacture the DI Products are in the U.S. See CX-0017C
(Mulhern WS) at Q/A 275.
JLI has invested in equipment used in the manufacture of the devices and empty
pods overseas, in addition to the equipment [
] in the U.S. in support of pod filling and packaging activities. See CX-
0017C (Mulhern WS) at Q/A 276-77. As of September 30, 2018, JLI reported a book
value of total manufacturing equipment worldwide of$ [ 	], of which$ [
] was based in the U.S. See CX-0754C (JLI Manufacturing Equipment
Summary). In addition to fixed assets owned by JLI at [
], JLI owns assets at [ 	]. 	See CX-
0754C (JLI Manufacturing Equipment Summary); CX-0464C (JLI Assets 12/31/2018).
As shown in CX-0464C (JLI Assets 12/31/2018), CX-0337C (2018-12-06 COGS
Analysis), CX-0837C (CM Annual Sales Summary), CX-0830C (JLI Excel Spreadsheet),
CX-0014C (Danaher WS) Q/A 20, JLI's U.S. operations contribute approximately [ 	]%
of the JUUL. system' s value. See CX-0017C (Mulhern WS) at Q/A 279. In other words,
although the device, charger, and empty pod are manufactured outside the U.S., a
considerable portion of the value of the JUUL system is derived from U.S. manufacturing
271

PUBLIC VERSION
activities associated with thee-liquid and the filling and packaging of the pods. See id.
The devices are manufactured outside the U.S. and the pods are manufactured partially
outside the U.S. and partially in the U.S. Thus, the share of overall system value
attributable to U.S. activities depends on how many pods are associated with a single
device. See CX-0017C (Mulhern WS) at Q/A 281.
JLI historical sales data indicates a [ 	] . See
CX-0734C (JUUL Sales Summary). This estimate of pods associated with each device is
conservative, given that [ 	] and JLI
provides a one-year device warranty. See CX-0014C (Danaher WS) Q/A 31, 42; CX-
. 0017C (Mulhern WS) at QIA 282. [ 	] results in the conclusion
that approximately [ 	]% of the JUUL system value-added is related to U.S. operations.
See CX-0017C (Mulhern WS) at Q/A 283; CX-0755C (JLI Domestic Value Added
Summary); CX-0337C (2018-12-06 COGS Analysis).
Between [ 	] activities relate to the
JUUL system, further supporting a finding of quantitative significance. See CX-0017C
(Mulhern WS) at Q/A 286. JLI's pod-filling and packaging contract-manufacturers
]. Similarly, in 2018, [ 	]% of [
were associated with the JUUL system. See CX-0745C (CM Plant & Equipment
Investments by DI Products). [ 	], in 2018, [ 	]% of [ 	] were
associated with the JUUL system and [
], as shown in CX-0746C (CM Plant & Equipment Investments by DI
Products 2).
272
]

PUBLIC VERSION
* 	* 	*
Accordingly, the record evidence supports a finding that JLI's domestic activities:
(1) add significant value to its domestic industry products; and (2) are significant in the
context of its worldwide operations. The evidence shows that JLI has made and continue
to make significant U.S. investments in plant, equipment, labor and capital under 19
U.S.C. § 1337(a)(3)(A) and (B).
X. 	Remedy and Bonding
This is the recommended determination of the administrative law judge on
remedy and bonding.
A. 	Limited Exclusion Order
The Commission has broad discretion in selecting the form, scope, and extent of
the remedy in a section 3 37 proceeding. Viscofan, S.A. v. United States Int 'I Trade
Comm 'n, 787 F.2d 544, 548 (Fed. Cir. 1986). A limited exclusion order directed to
respondents' infringing products is among the remedies that the Commission may
impose. See 19 U.S.C. § 1337(d).
The administrative law judge recommends that in the event the Commission
determines that a violation of section 337 has occurred, and if consideration of the
statutory public interest factors does not require that remedies be set aside or modified,
the Commission should issue a limited exclusion order covering all of the infringing
articles imported, sold for importation, or sold after importation by Eonsmoke and
respondent XFire, Inc. ("XFire") 35 and should apply to Eonsmoke's and XFire' s affiliated
35 As noted, on April 23, 2019 the administrative law judge issued an initial
273

PUBLIC VERSION
companies, parents, subsidiaries or other related business entities, or their successors or
assigns.
Further, in the event the Commission does issue a limited exclusion order in this
investigation, the exclusion order should include a provision that allows Eonsmoke to
certify, pursuant to procedures to be specified by U.S. Customs and Border Protection,
that it is familiar with the terms of the order, that it has made appropriate inquiry, and
that, to the best of its knowledge and belief, the products being imported are not excluded
from entry under the order.
B. Cease and Desist Order
Section 337 provides that in addition to, or in lieu of, the issuance of an exclusion
order, the Commission may issue a cease and desist order as a remedy for a violation of
section 337. 19 U.S.C. § 1337(f)(l). The Commission "generally issues a cease and
desist order only when a respondent maintains a commercially significant inventory of
infringing products in the United States." Certain Ground Fault Circuit Interrupters and
Products Containing Same, Inv. No. 337-TA-615, Comm'n Op. at 24 (Mar. 26, 2009);
Certain Video Game Systems, Accessories, and Components Thereof, Inv. No. 337-TA-
473, Comm'n Op. at 2 (Dec. 24, 2002).
The evidence shows that the inventory of the accused products held by Eonsmoke
is commercially significant. See CX-0017C (Mulhern WS) Q/A 313. Eonsmoke's
domestic operations include an office and warehouse in New Jersey, employing more
than 30 individuals. See CX-0017C (Mulhern WS) Q/A 293 . Eonsmoke' s inventory of
determination finding respondent XFire, Inc. in default. See Order No. 22.
274

PUBLIC VERSION
pods on March 8, 2019 was valued at between $2 million and $5 million, which equates
to approximately 133,422 to 333,556 packs of pods at retail prices. See CX-0756C
(Respondents US Inventory of Accused products Summary); CX-0757C (Eonsmoke US
Inventory & Unit Sales of Accused Products); CX-0851 (Eonsmoke's Supp. Responses to
JLI's First Set of Rogs).
Eonsmoke's inventory thus represents approximately 0.45 months (or
approximately 14 days) of sales of packs of pods. See CX-0017C (Mulhern WS) QIA
307; CX-0851 (Eonsmoke's Supp. Responses to JLI's First Set ofRogs indicating that in
the 17 months from October 2017 through February 2019, Eonsmoke has sold 5 million
units); CX-0757C (Eonsmoke US Inventory & Unit Sales of Accused products); CX-
0960C (Eonsmoke 2018 EoY Inventory). Eonsmoke's General Manager testified that
device inventory information is not always tracked comprehensively. See CX-0023C
(Zeller Dep. Designations) 42-43, 51-54. The March 8, 2019 inventory levels are
significantly higher than Eonsmoke's apparent year-end 2018 inventory, which was
approximately 85,600 packs of pods. See CX-0017C (Mulhern WS) Q/A 291.
A cease and desist order should also issue against XFire, a domestic respondent
who was found in default. JLI' s amended complaint alleged that XFire imported
infringing devices and pods and that it "maintain[ s] a commercially-significant inventory
of the XFire devices and pods in the United States." See Am. Compl. ,r,r 147-149, 162,
192.
C. 	Bond
Pursuant to section 3370)(3), the administrative law judge and the Commission
must determine the amount of bond to be required of a respondent, during the 60-day
275

PUBLIC VERSION
Presidential review period following the issuance of permanent relief, in the event that
the Commission determines to issue a remedy. The purpose of the bond is to protect the
complainant from any injury. 19 U.S.C. § 13370)(3); 19 C.F.R. §§ 210.42(a)(l)(ii),
210.50(a)(3).
When reliable price information is available, the Commission has often set bond
by eliminating the differential between the domestic product and the imported, infringing
product. Certain Microsphere Adhesives, Processes for Making Same, and Products
Containing Same, Including Self-Stick Repositionable Notes, Inv. No. 337-TA-366,
Comm'n Op. at 24 (1995). In other cases, the Commission has turned to alternative
approaches, especially when the level of a reasonable royalty rate could be ascertained.
Certain Integrated Circuit Telecommunication Chips and Products Containing Same,
Including Dialing Apparatus, Inv. No. 337-TA-337, Comm'n Op. at 41 (1995). A 100
percent bond has been required when no effective alternative existed. Certain Flash
Memory Circuits and Products Containing Same, Inv. No. 337-TA-382, USITC Pub. No.
3046, Comm'n Op. at 26-27 (July 1997) (a 100% bond imposed when price comparison
was not practical because the parties sold products at different levels of commerce, and
the proposed royalty rate appeared to be de minimis and without adequate support in the
record).
The evidence shows that there is direct competition between participating
respondents' 36 accused products and JLI's JUUL system, which will result in continuing
injury to JLI in the form of displaced sales. See CX-0017C (Mulhern WS) Q/A 316.
36 Participating respondents refer to V4L, Ziip respondents and Eonsmoke.
276

PUBLIC VERSION
Both the JUUL system and respondents' accused products compete generally in the U.S.
marketplace for ENDS devices and associated refill pods. See id. at QIA 31 7.
Like the JUUL system, participating respondents' accused products are sold
through a variety of distribution channels, including online and through retail outlets such
as convenience stores, gas stations, and tobacco/specialty shops. JLI and several of the
respondents (such as Ziip respondents) make wholesale sales to distributors. See CX-
0638 (EY ENDS Report) (identifying distribution channels for JUUL). In some cases,
retailers sell both JLI's JUUL system as well as participating respondents' accused
products. For example, the e-commerce retailer printpointny.com sells the JUUL system
as well as the accused products from Eonsmoke. Similarly, respondent V 4L sells both
JUUL products as well as other Accused products. See CX-0666 (Price Point JUUL
Collection Screenshot); CX-0665 (Price Point Eonsmoke Screenshot).
Additionally, participating respondents have directly targeted JLI and the JUUL
system with their marketing. See CX-0017C (Mulhern WS) Q/A 318-321. Some of
participating respondents ' accused pods are marketed as "JUUL compatible." The JUUL
designation on participating respondents' pod products emphasizes the direct competition
between the JUUL system and participating respondents' accused products. See CX-
0275C (V4L' s 2nd Supp. Responses to JLI's First Set ofRogs) , at 2-3; CX-0632
(Eonsmoke Buy Page Screenshot showing "JUUL compatible" marketing) and CX-0710
(Ziip Stock JUUL Compatible Pods Search Screenshot; same).
As explained in CX-0759C (Bond Price Differential Summary), CX-0307C (JLI
Pricing Summary), CX-0851 (Eonsmoke' s Supp. Responses to JLI's First Set ofRogs) ,
at Exhibit A, CX-0782C (Ziip' s Supp. Responses to JLI's First Set ofRogs) , at Exhibit
277

PUBLIC VERSION
A; CX-0026C (Grishayev Designations) 209-210, a bond amount based on price
differentials is appropriate in cases such as this where there is direct competition between
Complainant's DI products and participating respondents' accused imports. See CX-
0017C (Mulhern WS) Q/ A 323. While Ms. Mulhern performed a price differential
analysis for JLI and the various accused products, she explained that such an analysis was
complicated in this investigation due to a number of factors. See CX-0017C (Mulhern
WS) Q/ A 324. First, complainant and participating respondents operate at various levels
of the supply chain. For example, JLI sells to wholesalers as well as directly to end-
consumers. Participating respondents range from manufacturers (e .g., Ziip) to retailers
(e.g., V4L). Second, some of the respondents, such as defaulted respondent XFire, did
not provide information regarding the prices of the accused products.
Third, publicly available pricing data even on the same respondents' websites is,
at times, inconsistent. For example, a search of Eonsmoke pods on V4L' s website results
in a page that indicates the price for a four-pack of pods is $15.99. See CX-0017C
(Mulhern WS) Q/A 328. However ," a search for Eonsmoke Lush Ice pods directly results
in a different page, indicating a reduced price of $13.99. See CX-0676 (V4L Eon Pods
Screenshot 2) and CX-0683 (V 4L Eonsmoke Search Results Screenshot 2). Similarly,
Mr. Grishayev, Eonsmoke 's Co-Founder and Operating Officer, testified that the price
range for customers buying directly from the Eonsmoke website was " [a]fter using a
discount code, probably like 12.99, 11.99, 12.99, all the way up to 14.99." See CX-
0026C (Grishayev Dep.) 210.
Fourth, there is evidence that participating respondents consistently provide
discounts or coupons for their products beyond the publicly available price. For example,
278

PUBLIC VERSION
Mr. Tolmach, Eonsmoke Co-founder and CEO, testified in that Eonsmoke provides
"coupons at the top of our website" for 20% off that is "always live" and that
" [p ]eriodically we will e-mail our customer base with like 25 or 30%" discounts. See
CX-0018C (Tolmach Designations (Apr. 4, 2019)) 200.
Finally, the DI and accused products are sold in a variety of configurations,
making direct pricing comparisons difficult. See CX-0017C (Mulhern WS) Q/A 325.
For instance, " Starter kits" sold by JLI contain a device, charger, and four pods. In
contrast, the Flair Infinity starter kit includes a device, charger, and eight pods.
Moreover, the volume of e-liquid in a single pod differs across participating respondents.
See CX -0762C (Bond Price Differential - Pods). See also CX-0656 (JUUL Starter Kit
Retail Website).
Accordingly, if the Commission imposes a remedy that prohibits importation, it is
recommended that the Commission subject Eonsmoke' s and XFire's importations during
the Presidential review period to 100 percent bond.
D. 	Public Interest Factors
The Commission' s notice of investigation provides in part:
Pursuant to Commission Rule 210.50(b)(l), 19 C.F.R. §
210.50(b)(l) , the presiding administrative law judge shall take
evidence or other information and hear arguments from the parties
or other interested persons with respect to the public interest in this
investigation, as appropriate, and provide the Commission with
findings of fact and a recommended determination on this issue,
which shall be limited to the statutory public interest factors set
forth in 19 U.S.C. §§ 1337(d)(l), (f)(l) , (g)(l)[.]
83 Fed. Reg. 64156 (Dec. 13 , 2018).
As indicated in the Commission' s notice, the public interest information and
279

PUBLIC VERSION
recommendation of the administrative law judge in this investigation is limited to the
factors set forth by statute in 19 U.S.C. §§ 1337(d)(l), (f)(l) , (g)(l). Those statutory
factors do not address broader trade policy questions of whether products at issue in an
investigation should be imported or sold after importation. Rather, the statutory factors
to the considered by the administrative law judge and the Commission relate to the
question of whether it would be in the public interest to allow the products to be imported
or sold after importation even if there is a violation of section 337. 37 As discussed below,
there is no evidence relating to the statutory factors to indicate that the Commission
should allow products to be imported or sold after importation even if there is a violation
of section 337. Thus, it is the recommendation of the administrative law judge that the
Commission issue any appropriate remedy pursuant to 337 with respect to any products
or parties found in violation of section 337 or any party found to be in default.
The statutory public interest factors were not briefed by Eonsmoke, or indeed by
any respondent.
37 For example, section 337(d)(l) provides:
(1) If the Commission determines, as a result of an investigation
under this section, that there is a violation of this section, it shall
direct that the articles concerned, imported by any person violating
the provision of this section, be excluded from entry into the
United States, unless, after considering the effect of such exclusion
upon the public health and welfare, competitive conditions in the
United States economy, the production oflike or directly
competitive articles in the United States, and United States
consumers, it finds that such articles should not be excluded from
entry. The Commission shall notify the Secretary of the Treasury
of its action under this subsection directing such exclusion from
entry, and upon receipt of such notice, the Secretary shall, through
the proper officers, refuse such entry.
19 U.S.C. § 1337(d)(l) (emphasis added).
280

PUBLIC VERSION
JLI provided some briefmg relating to the statutory public interest factors. See
JLI Br. at 217.
The Staff noted in its initial posthearing brief, "Even though public interest was
delegated in this Investigation, none of the Respondents argued in their pre-hearing briefs
that the public interest should preclude a remedy." Staff Br. at 121. Furthermore, the
Staff argued, "Additionally, the Staff agrees with JLI that there are no public health,
safety or welfare concerns implicated_by the requested LEO. See CPreHBr. at 200." Id.
The public interest does not preclude issuance of limited exclusion orders or cease
and desist orders. JLI has more than adequate capacity to meet any increase in demand if
the accused products were to be excluded from importation. JLI' s expanding capacity
has been responsible for over 90% of the growth in the ENDS market in the U.S. from
2016 to Nov. 2018. See CX-1354C (Mulhern Rebuttal WS) Q/A 33. JLI expects to
). See CX-0014C (Danaher WS) Q/A 23.
* 	* 	*
It is the RECOMMENDED DETERMINATION ("RD") of the administrative
law judge that in the event a violation of section 337 is found, the Commission should
issue a limited exclusion order, and a cease and desist order. Further, if the Commission
imposes a remedy that prohibits importation, it is recommended that the Commission
subject Eonsmoke' s and XFire's importations during the Presidential review period to a
100 percent bond.
281

PUBLIC VERSION
XI. Conclusions of Law
1. The Commission has subject matter, personal, and in rem jurisdiction in
this investigation.
2. The accused products have been imported or sold for importation into the
United States.
3. The accused products infringe the asserted claims of U.S. Patent No.
10,070,669; U.S. Patent No . 10,045,568; U.S. Patent No. 10,058,130; and U.S. Patent
No . 10,104,915.
4. The domestic industry requirement has been satisfied with respect to U.S.
Patent No. 10,070,669; U.S. Patent No . 10,045,568; U.S. Patent No . 10,058,130; and
U.S. Patent No. 10,104,915.
5. It has not been shown by clear and convincing evidence that the asserted
claims of U.S. Patent No. 10,070,669; U.S. Patent No. 10,045,568; U.S. Patent No.
10,058,130; and U.S. Patent No . 10,104,915 are invalid.
XII. Initial Determination and Order
Accordingly, it is the INITIAL DETERMINATION of the undersigned that a
violation of section 337 (19 U.S.C. § 1337) has occurred in the importation into the
United States, the sale for importation, or the sale within the United States after
importation, of certain electronic nicotine delivery systems and components thereof that
infringe the asserted claims of U.S. Patent No . 10,070,669; U.S. Patent No. 10,045,568;
U.S. Patent No . 10,058,130; and U.S. Patent No . 10,104,915.
Further, this Initial Determination, together with the record of the hearing in this
investigation consisting of (1) the transcript of the hearing, with appropriate corrections
282

PUBLIC VERSION
as may hereafter be ordered, and (2) the exhibits received into evidence in this
investigation, is CERTIFIED to the Commission.
In accordance with 19 C.F.R. § 210.39(c), all material found to be confidential by
the undersigned under 19 C.F.R. § 210.5 is to be given in camera treatment.
The Secretary shall serve a public version of this ID upon all parties of record and
the confidential version upon counsel who are signatories to the Protective Order issued
in this investigation.
Pursuant to 19 C.F.R. § 210.42(h), this Initial Determination shall become the
determination of the Commission unless a party files a petition for review pursuant to
§ 210.43(a) or the Commission, pursuant to§ 210.44, orders on its own motion a review
of the ID or certain issues herein.
* 	* 	*
To expedite service of the public version, each party is hereby ordered to file with
the Commission Secretary no later than December 20, 2019, a copy of this initial
determination with bold red brackets to show any portion considered by the party ( or its
suppliers of information) to be confidential, accompanied by a list indicating each page
on which such a bracket is to be found. At least one copy of such a filing shall be served
upon the office of the undersigned. If a party ( and its suppliers of information) considers
283

PUBLIC VERSION
nothing in the initial determination to be confidential, and thus makes no request that any
portion be redacted from the public version, then a statement to that effect shall be filed. 38
Issued: December 13, 2019
David P. Shaw
Administrative Law Judge
?8 Confidential business information ("CBI") is defined in accordance with 19 C.F.R. §
201.6(a) and§ 210.5(a). When redacting CBI or bracketing portions of documents to
indicate CBI, a high level of care must be exercised in order to ensure that non-CBI
portions are not redacted or indicated. Other than in extremely rare circumstances, block-
redaction and block-bracketing are prohibited. In most cases, redaction or bracketing of
only discrete CBI words and phrases will be permitted.
284

CERTAIN ELECTRONIC NICOTINE DELIVERY SYSTEMS AND COMPONENTS
THEREOF
INV. NO. 337-TA-1139
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached Final Initial Determination and
Recommended Determination has been served by hand upon the Commission Investigative
Attorney, Paul Gennari~Es9., and the following parties as indicated, on
JAN 	1 .1 2020 	.
FOR COMPLAINANT JUUL LABS, INC.:
Daniel E. Yonan, Esq.
~	~& 	:>Lisa R. Barton, Secretary
---
U.S. International Trade Commission
500 E Street SW, Room 112A
Washington, DC 20436
--·-- - - ----- -, 	. ~-,r- ·~ 	.,. -~---------- -~ ···----~· ~-··
STERNE, KESSLER, GOLDSTEIN & FOX PLLC
( % Via Hand Delivery
( 	Express Delivery
1100 New York Avenue, NW 	( 	) Via First Class Mail
Washington, DC 20005 	( 	) Other:
-·-r, -,-----~ 	-- 	·-•- 	.. - 	--- .,.- - ······- 	-
FOR RESPONDENT EONSMOKE, LLC: '
Stephen M. Lobbin, Esq. 	( 	) Via Hand Delivery
SML A VVOCATI P.C. 	( ../f Express Delivery
7538 Draper Avenue 	( 	) Via First Class Mail
San Diego, CA 9203 7 	( 	) Other:
·- - 	-· 	·;~--~·,-·,i•_" __ .,.... '';:; .•.. ,. 	-· .. 	•- -~··,nr. ••···,,- •-• ,•- • r- 	- 	"Cj 	..... .,.
RESPONDENT: ~
Keep Vapor Electronic Tech. Co., Ltd. 	( 	) Via Hand Delivery
Block D, XinLong Techno Park 	( J{ Express Delivery
ShaJing Town, Bao An District 	( 	) Via First Class Mail
Shenzhen, China 	( 	) Other:

UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of S
Investigation N0. 337-TA-1139CERTAIN ELECTRONIC NICOTINE
DELIVERY SYSTEMS AND
COMPONENTS THEREOF
NOTICE OF A COMMISSION DETERMINATION TO REVIEW IN
PART AN INITIAL DETERMINATION GRANTING IN PART
COMPLAINANT’S MOTION FOR SUMMARY DETERMINATION OF
IMPORTATION, INFRINGEMENT, AND DOMESTIC INDUSTRY
AGENCY: U.S. International Trade Commission.
ACTION: Notice.
SUMMARY: Notice is hereby given that the U.S. International Trade Commission has
determined to review in part an initial determination (“ID”) (Order No. 35) of the presiding
administrative law judge (“ALJ”) granting in part the Complainant’s motion for summary
determination of importation, infringement, and domestic industry. The Commission has
determined to remand to the ALJ for clarification regarding the analysis of infringement and the
statement regarding mootness.
FOR FURTHER INFORMATION CONTACT: Lynde Herzbach, Office of the General
Counsel, U.S. International Trade Commission, 500 E Street SW, Washington, D.C. 20436,
telephone 202-205-3228. Copies of non-confidential documents filed in connection with this
investigation are or will be available for inspection during official business hours (8:45 a.m. to
5:15 p.m.) in the Office of the Secretary, U.S. International Trade Commission, 500 E Street,
SW, Washington, D.C. 20436, telephone (202) 205-2000. General information concerning the
Commission may also be obtained by accessing its Internet server at https://www.usitc.gov. The
public record for this investigation may be viewed on the Comrnission’s electronic docket
(EDIS) at https://edis. usitc.gov. Hearing-impaired persons are advised that infonnation on this
matter can be obtained by contacting the Commissi0n’s TDD terminal on (202) 205-1810.
SUPPLEMENTARY INFORMATION: On December 13, 2018, the Commission instituted
this investigation under section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. 1337
(“section 337”) based on a complaint filed on behalf of Juul Labs, Inc. (“JLI”) of San Francisco,
California. 83 Fed. Reg. 64156-57 (Dec. 13, 2018). The complaint, as amended and
supplemented, alleges violations of section 337 based upon the importation into the United
States, the sale for importation, and the sale within the United States after importation of certain

electronic nicotine delivery systems and components thereof by reason of infringement of certain
claims ofU.S. Patent Nos. 10,070,669; 10,076,139; 10,045,568; 10,058,130; and 10,104,915
(collectively, “the Asserted Patents”). Id. The Commission’s notice of investigation names
twenty-one respondents, including Zlab S.A. of Punta del Este —Maldonado, Uruguay; SS Group
Holdings of Shenzhen City, China; and Shenzhen Yibo Technology Co. Ltd. of Shenzhen City,
China (collectively, “the Ziip Respondents”); Eonsmoke LLC of Clifton, New Jersey
(“Eonsmoke”); ALD Group Ltd. of Shenzhen City, China (“ALD”); Shenzhen Joecig
Technology Co., Ltd. of Shenzhen City, China (“Joecig”); and Vapor 4 Life Holdings, Inc. of
Northbrook, Illinois (“V4L”) (all collectively, “Motion Respondents”). Id.; see also Order No.
26 (May 21, 2019), not reviewed, Notice (June 14, 2019) (amending the complaint and notice of
investigation). The Office of Unfair Import Investigations (“OUII”) is also a party to the
investigation. Id.
On June 7, 2019, JLI filed a motion for summary determination of importation and
infringement as to Motion Respondents’ accused products as well as the satisfaction of the
domestic industry requirement. See ID at 1; see also JLI’s Amended Motion for Summary
Determination Regarding Importation, Infringement, and Domestic Industry (“JLI’s Motion”).
On June 14, 2019, JLI filed an amended motion. Id.
On June 26, 2019, ALD and Joecig jointly filed a response in opposition to JLI’s
Motion, but on July 26, 2019, they filed a notice to withdraw the response. ID at 1. No
other Motion Respondents filed a response to JLI’s Motion. Id.
On July 1, 2019, OUII filed a response supporting JLI’s Motion in part. ID at 2.
On July 8, 2019, JLI filed a motion for leave to file a reply. ID at 1-2. The ID grants
JLI leave to file the reply, which is attached to the motion for leave as Exhibit A. Id.
On July 19, 2019, JLI filed an update withdrawing JLI’s Motion as to the importation
requirement for ALD, Joecig, and their accused products. Id at 1 (n.2).
On August 5, 2019, the ALJ issued the subject ID granting the motion for summary
determination in part. See ID. The ID finds that JLI is entitled to summary determination of
importation with respect to the Ziip Respondents and their accused products; Eonsmoke and
its accused products; and V4L and certain V4L accused products. ID at 4-1 1. The ID’s
analysis of whether the Ziip Respondents’ accused products infringe the Asserted Patents
states, “the question of whether Ziip accused products contain or perform each limitation of
asserted claims is moot.” Id. at 11. The ID does not specifically state whether summary
determination of infringement as to the Ziip Respondents is denied or granted nor the
reasoning supporting grant or denial of the motion as to this issue. Id.
The Commission has determined to review the subject ID in part. Specifically, the
Cormnission reviews the ID’s analysis as to infringement and statement regarding mootness on
page ll. ID at ll.
2

The Commission remands to the ALJ for clarification of the analysis and statement
regarding mootness on page 11, and for clarification as to whether the ID grants or denies
summary determination that the Ziip Respondents infringe the Asseited Patents and reasoning in I
support thereof. The Commission does not seek further briefing at this time. Further, the
Commission’s review in part and remand does not change the target date for completion of the
investigation.
The authority for the Commission’s determination is contained in section 337 of the
Tariff Act of 1930, as amended, 19 U.S.C. 1337, and in Part 210 ofthe Commission’s Rules of
Practice and Procedure, 19 CFR Part 210. 	'
By order of the Commission. .
Lisa R. Barton
Secretary to the Commission
Issued: September 4, 2019 	\
F
3

CERTAIN ELECTRONIC NICOTINE DELIVERY SYSTEMS 	Inv. No. 337-TA-1139
AND COMPONENTS THEREOF
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached NOTICE has been served by hand
upon the Commission Investigative Attorney, Paul Gennari, Esq., and the following patties as
indicated, on 9/4/2019
On Behalf of Complainants Juul Labs, Inc.
Daniel E. Yonan, Esq.
STERNE, KESSLER, GOLDSTEIN & FOX, P.L.L.C.
1100 New York Avenue, N.W.
Washington, DC 20005
WY/.?@
Lisa R. Barton, Secretary
U.S. International Trade Cormnission
500 E Street, SW, Room 112
Washington, DC 20436
U Via Hand Delivery
Via Express Delivery
U Via First Class Mail
III Other:
On Behalf of Respondent Vapor 4 Life Holdings. Inc:
Eric N. Heyer, Esq.
THOMPSON HINE LLP
1919 M Street, N.W.,
Suite 700
Washington, DC 20036
On Behalf of Respondents Eonsmoke. LLC,_
Stephen M. Lobbin, Esq.
SML AVVOCATI P.C.
7538 Draper Avenue
San Diego, California 92037
U Via Hand Delivery
Via Express Delivery
U Via First Class Mail
III Other:
[:1Via Hand Delivery
Via Express Delivery
Cl Via First Class Mail
III Other:

CERTAIN ELECTRONIC NICOTINE DELIVERY
SYSTEMS AND COMPONENTS THEREOF
Certificate of Service —Page 2
On Behalf of Respondents ZLab S.A.. Ziip Lab C0.. Limited,
and Shenzhen Yibo Technology C0.. Ltd.
Steven Susser Esq.
Carlson, Gaskey and Olds, P.C.
400 West Maple Road
Suite 350
Birmingham, MI 48009
Respondents:
Keep Vapor Electronic Tech. C0., Ltd.
Block D, XinLong Techno Park
Shaling Town, Bao An District
Shenzhen, China
Inv. N0. 337-TA-1139
U Via Hand Delivery
Via Express Delivery
U Via First Class Mail
III Other:
U Via Hand Delivery
Via Express Delivery
U Via First Class Mail
Cl Other:

PUBLIC VERSION
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN ELECTRONIC NICOTINE
DELIVERY SYSTEMS AND
COMPONENTS THEREOF
Inv. No.337-TA-1139
Order No.35(Initial Determination)
On June 7, 2019, pursuant to Commission Rule 210.21(b), complainant Juul Labs, Inc.
("JLI" or "Juul")filed a motion for summary determination ofimportation, infringement, and
domestic industry as to respondents Zlab S.A., SS Group Holdings, and Shenzhen Yibo
Technology Co. Ltd.(collectively "the Ziip respondents" or "Ziip"), Eonsmoke LLC
("Eonsmoke"), ALD Group Ltd.("ALD"),Shenzhen Joecig Technology Co., Ltd.("Joecig"),
and Vapor 4 Life Holdings, Inc.("V4L" or "Vapor 4 Life")(all collectively, "respondents").
Motion Docket No. 1139-51. On June 14, 2019, Juul filed an amended motion. Motion Docket
No. 1139-51.1
On June 26,2019, ALD and Joecig filed a response in opposition.2 On July 1, 2019, the
Commission investigative attorney ("Staff')filed a response supporting the pending motion in
part. No other response was filed. On July 8, 2019, Juul filed a motion for leave to file a reply
1 References to the pending motion hereinafter refer to the amended motion filed on June 14,
2019.
2 On July 18, 2019, ALD and Joecig filed a notice to withdraw their opposition to the pending
motion. On July 19, 2019, Juul filed an update pursuant to Ground Rule 5.h, withdrawing the
motion for summary determination that the importation requirement is met for ALD's and
Joecig's accused products. Thus,those aspects of the pending motion are moot.

in'support ofthe pending motion. Motion Docket No. 1139-56. No response was filed. Motion
No. 1139-56 is granted.
Juul argues that it is entitled to summary determination regarding the following issues:
(A)Importation, sale for importation, or sale after importation into the United
States under 19 U.S.C. § 1337(a)(1)(B)for all accused products for all
Respondents;
(B)Infringement of all asserted claims by all accused products for the Ziip
Respondents, Eonsmoke, and V4L;
(C)The technical prong of the domestic industry requirement of 19 U.S.C. §
1337(a)(2)for all asserted patents; and
(D)The economic prong of domestic-industry requirement of 19 U.S.C. §
1337(a)(2)for all asserted patents.
Mot. at 1-2.
The Staff argues:
(1) summary determination ofimportation is appropriate for the following:
a. Ziip Respondents and all of Ziip's Accused Products;
b. Eonsmoke and all of Eonsmoke's Accused Products;
c. Vapor 4 Life with respect to the "First Category" of Vapor 4 Life
Accused Products:
d. Vapor 4 Life with respect to the following Second Category of Vapor
4 Life Accused Products: SMOK Infinix device, ViV pod, Sourin
iShare device and Sourin iShare pod;
e. ALD with respect to the XFire devices and XFire pods but only with
respect to the '669 patent; and
f. Joecig with respect to Joecig's Accused Products;
(2) summary determination of infringement with respect to all Respondents
and each of the asserted patents is not appropriate;
(3) summary determination that JLI's JUUL-system domestic industry
product satisfies the technical prong ofthe domestic industry requirement
is not appropriate;
(4) summary determination that JLI satisfies the economic prong ofthe
domestic industry requirement under 19 U.S.C. § 1337(a)(3)(A) is not
appropriate.
Staff Resp. at 1-2.
2

Section 337 prohibits "Mlle importation into the United States, the sale for importation,
or the sale within the United States after importation by the owner, importer, or consignee, of
articles that (i) infringe a valid and enforceable United States patent ...." 19 U.S.C.
§ 1337(a)(1)(B). A complainant need only prove importation of a single accused product to
satisfy the importation element. See Certain Trolley Wheel Assemblies, Inv. No. 337-TA-161,
Comm'n Op. at 7-8, USITC Pub. No. 1605(Nov. 1984).
The Commission Rules provide that "[a]ny party may move with any necessary
supporting affidavits for a summary determination in its favor upon all or part ofthe issues to be
determined in the investigation. 19 C.F.R. § 210.18(a). Summary determination "shall be
rendered if pleadings and any depositions, answers to interrogatories, and admissions on file,
together with the affidavits, if any, show that there is no genuine issue as to any material fact and
that the moving party is entitled to summary determination as a matter of law." 19 C.F.R.
§ 210.18(b).
1. Importation
A. The Ziip Respondents
The Ziip Respondents manufacture, import, and sell various accused products. Mot. at 2.
The accused Ziip products are the Ziip devices, Ziip Pods,Plus Pods, Airbender Pods, Iced Pods,
Eonsmoke Pods(also known as Eon Pods), Loon Pods, Mr. Fog Pods, Cali Pods, Delicious Pods,
ViV Pods, Unique Pods,I-pods, Jewel pods, Amo pods, Vape Heads pods, OG pods, Pods pods,
Cigma pods, Salteez pods, Magic Pods, Sonic pods, and Kir Pods. Mot. at 2-3; Statement of
Undisputed Material Fact("SUMF"),4114.
Ziip respondents admit that they have manufactured in China and have sold for
importation into the United States at least one unit of each ofthe their accused pod and device
3

products after issuance of U.S. Patent Nos. 10,070,669, 10,045,568, 10,058,130, and 10,104,915.
See SUMF,¶IJ 11-12. Indeed, the Ziip respondents have stipulated that they "have imported into
the United States, sold for importation into the United States, or sold within the United States
after importation, within the meaning of 19 U.S.C. § 1337(a)(1)(B), at least one unit of each Ziip
Respondents' Accused Pod Product and Accused Device Product as ofthe time of execution of
this Stipulation and after issuance of[the asserted patents]." See Mot. at 14; SUMF,IR 13; Mot.
Ex. 7(5/22/19 Stipulation Regarding Importation, Infringement, Domestic Industry, and Public
Interest("May 22 Stipulation")), ¶¶ 5, 1, 2. The Staff agrees that Juul is entitled to summary
determination with respect to the importation requirement for the Ziip respondents. See Staff
Resp. at 7.
There is no genuine issue as to any material fact concerning importation with respect to
Ziip's accused products. Juul is entitled to summary determination as a matter oflaw that it has
satisfied the importation requirement with respect to all accused products for the Ziip
respondents.
B. Eonsmoke
Eonsmoke is an importer and retailer that sells various accused products manufactured
and/or imported by the Ziip respondents, and other manufacturers. Mot. at 3. The accused
Eonsmoke products are the Eonsmoke devices, Eonsmoke v2.0 devices and pods, Eonsmoke
pods, and 4X pods. See Mot. at 3; SUMF,¶J 5, 16.
As discussed below, Eonsmoke admits that it imports and sells after importation the
accused Eonsmoke devices, Eonsmoke pods, and 4X pods. See Mot. at 14; SUMF,¶J 14-16.
The evidence shows Eonsmoke imports and sells after importation into the United States
the accused 4X pods. See, e.g., Mot. Ex. 4(E0N000001), Mot. Ex. 5(E0N000012 —
4

EON000014)(various invoices showing Eonsmoke purchases from China for delivery to Clifton,
New Jersey); Supp. Resp. to RFA Nos. 69, 70, and 77(admitting that Eonsmoke imports the 4X
pods into the U.S.). SUMF,¶ 14. Eonsmoke imports and sells after importation into the United
States the accused Eonsmoke devices and pods. See, e.g., Mot. Ex.6(Supp. Resp. to RFA Nos.
1, 2, 18, and 19)(admitting that Eonsmoke imports the Eonsmoke devices and pods sold in the
U.S.). SUMF,¶ 15. Eonsmoke imports and sells after importation into the United States the
accused Eonsmoke v2.0 devices and pods. See, e.g., Mot. Ex.6(Supp. Resp. to RFA Nos. 35,
36,43-48, 52-53, and 60)(admitting that Eonsmoke sells after importation and imports the
Eonsmoke v2.0 devices and pods). The Staff agrees that Juul is entitled to summary
determination with respect to the importation requirement for Eonsmoke products. See Staff
Resp. at 7-8.
The Staff provided a chart ofthe Eonsmoke's admissions relevant to importation of each
of Eonsmoke's accused products as shown below.
Accused Products
Ex.# Evidence of Admissions
Eonsmoke device 6 RFA 1 (import)
Eonsmoke pods 6 RFA 18 (import)
Eonsmoke v2.0
device
6 RFA 35(import)
RFA 47(manufactured in China)
Eonsmoke v2.0 pods 6 RFA 52(import)
RFA 64(manufactured in China)
4X pods 6 RFA 69(import)
Staff Resp. at 8(footnotes omitted).
There is no genuine issue as to any material fact concerning importation with respect to
Eonsmoke's accused products. Juul is entitled to summary determination as a matter oflaw that
it has satisfied the importation requirement with respect to all accused products for Eonsmoke.
5

C. Vapor 4 Life
V4L is a reseller ofimported products that are manufactured and imported by other
respondents in this investigation. The accused V4L products include the Ziip devices and pods,
Eonsmoke devices, Eonsmoke pods, Plus pods,4X Pods, and ViV pods. See Mot. at 3; SUMF,¶
6.
There are two categories of Vapor 4 Life accused products. The first category of accused
products overlap with products ofthe Ziip respondents and Eonsmoke, given that Vapor 4 Life is
a reseller of products imported either by those respondents or by Vapor 4 Life. These accused
products are:(a)from the Ziip respondents: Ziip Devices, Ziip pods, Ziip's Plus Pods, and Ziip
Ice Pods, and(b)from Eonsmoke: Eonsmoke devices, Eonsmoke pods, and 4X pods. See Mot.
at 3; SUMF,¶ 17.
The second category of accused Vapor 4 Life products are those that are not associated
with any other respondent; these are: SMOK Infinix device, SMOK Infinix pod, SMOK Fit
Device, SMOK Fit pod, Sourin iShare device, Sourin iShare pod, Bombz pod, Cync Device, and
Cync Pod. See Mot. at 3; SUMF,¶ 18.
First Category
The evidence with respect to the Ziip respondents and Eonsmoke discussed above
demonstrates that the first category of accused products are imported. The Staff provided a chart
of Vapor 4 Life's admissions for each the first category of accused products as shown below.
Accused Products
Ex.# Evidence of Admissions
Ziip devices 3 Rog 7(has sold and continues to sell)
Rog 10(has sold, and continues to sell)
15 Parag. 45 (distributes)
Ziip pods 3 Rog 7(has sold and continues to sell; and imported)
6

Rog 10(has sold, and continues to sell)
15 Parag. 45 (distributes)
Ziip Plus pods 3 Rog 4(identifies suppliers)
Rog 7(sells or has sold)
Ziip Iced pods 27 RFA 639(imported Ziip pods including Iced pods after
10/23/18)
Eonsmoke device 28 RFA 678(sold after 10/23/18)
Eonsmoke pods 3 Rog 7(has sold and continues to sell)
Rog 10(has sold, and continues to sell)
15 Parag. 37(distributes)
28 RFA 678 (sold after 10/23/18)
RFA 680(sold after 10/23/18)
4X pods 28 RFA 686(sold after importation)
3 Rog 7(has sold and continues to sell)
Rog 10(has sold, and continues to sell)
3 Rog 4(Eonsmoke supplied 4X pods)
15 Parag. 37(distributes)
Staff Resp. at 9-10(footnotes omitted).
There is no genuine issue as to any material fact concerning importation with respect to
the first category of Vapor 4 Life accused products. Juul is entitled to summary determination as
a matter oflaw that it has satisfied the importation requirement with respect to the first category
of Vapor 4 Life accused products.
Second Category
As noted above,the second category of accused Vapor 4 Life products are those that are
not associated with any other respondent; these are: SMOK Infinix device, SMOK Infinix pod,
SMOK Fit Device, SMOK Fit pod, ViV pod, Sourin iShare device, Sourin iShare pod, Bombz
pod, Cync Device, and Cync Pod. See Mot. at 3; SUMF,¶ 18.
The Staff agreed that the evidence supports importation for SMOK Infinix device, ViV
7

pod, Sourin iShare device, and Smrrin iShare pod. · The Staff, however, argues that JLI was
missing importation evidence for the SMOK Infinix pod, SMOK Fit device, SMOK Fit pod,
Bombz pod, Cync device, and Cync pod. See Staff Resp. at 1, 11-12, 30-31.
For the ViV pod, Vapor 4 Life admits that it imported those products. Mot. Ex. 27 (RFA
623); SUMF, ,i 18. In addition, Juul presented a packing list demonstrating that ViV Pods were
purchased in September 2018 by Vapor 4 Life from a Chinese vendor. Mot. Ex. 20; SUMF, ,i 18.
For the Sourin iShare devices and pods, Vapor 4 Life admits that it sold those products in the
United States. Mot. Ex. 28 (RFA 700); SUMF, ii 18. Additionally, Juul submitted photographs
of the Sourin iShare packaging, which shows that the device and the pod are made in China. See
Mot. Ex. 31.
With respect to SMOK Infinix device, SMOK lnfinix pod, SMOK Fit Device, and
SMOK Fit pod, the evidence presented by Juul summarized in a table (shown below)
demonstrates that those products were imported, and sold after importation in the United States.
Product Evidence cited in MSD
Motion Confidential Exhibit 27 (V4L's Responses to JLI's 3rd
Set ofRFAs) at RFA 334 (admitting importation of the
SMOK lnfinix Pods before October 23, 2018), RFA 345
(admitting involvement in U.S. sale of SMOK lnfinix Pods
after October 23, 2018), RFAs 346-347 (admitting SMOK
SMOK Infinix Pods lnfinix Pods are manufactured outside the U.S., in China);
Motion Confidential Exhibit 3 Second Supp. Response to
Interrogatory 4 (listing Chinese supplier); Motion Confidential
Exhibit 28 (V4L' s Responses to JLI's 4th Set of RF As) at
RFA 694 (admitting U.S. sale of SMOK lnfinix Pods after
October 23, 2018).
8

' Motion Confidential Exhibit 27 (V4L's Responses to JLI's 3rd
Set ofRFAs) at RFA 318 (admitting importation of the
SMOK Infinix Device before October 23, 2018), RFA 329
(admitting involvement in U.S. sale of SMOK Infinix Devices
after October 23, 2018) RFA 330-331 (admitting SMOK
SMOK lnfinix Device 	Infinix Device is manufactured outside the U.S., in China);
Motion Confidential Exhibit 3 Second Supp. Response to
Interrogatory 4 (listing Chinese supplier); Motion Confidential
Exhibit 28 (Y4L's Responses to JLl's 4th Set of RFAs) at
RFA 692 (admitting U.S. sale ofSMOK Infinix Devices after
October 23, 2018).
Motion Confidential Exhibit 27 (V4L's Responses to JLI's 3rd
Set ~fRFAs) at RFA 350 (admitting importation ofilie
SMOK Fit D~vice before October 23, 2018), RFA 361
(admitting involvement in U.S. sale ofSMOK Fit Device after
October 23, 2018), RFAs 362-363 (admitting SMOK Fit
SMOK Fit Device 	Device is manufactured outside the U.S., in China); Motion
Confidential Exhibit 3 Second Supp. Response to
Interrogatory 4 (listing Chinese supplier); Motion Confidential
Exhibit 28 (V4L's Responses to JLI's 4th ~et of RFAs) at
RFA 696 (admitting U.S. sale of SMOK Fit Device after
October 23, 2018).
Motion Confidential Exhibit 27 (V4L's Responses to JLI's 3rd
Set of RFAs) at RFA 366 (admitting importation of the
. SMOK Fit Pods before October 23, 2018), RFA 377
(admitting involvement in U.S. sale of SMOK Fit Pods after
October 23, 2018), RF As 378-379 (admitting SMOK Fit Pods
SMOK Fit Pods 	are manufactured outside the U.S., in China); Motion
Confidential Exhibit 3 Second Supp. Response to
Interrogatory 4 (listing Chinese supplier); Motion Confidential
Exhibit 28 (V4L's Responses to JLI's 4th Set of RFAs) at
RFA 698 (admitting U.S. sale ofSMOK Fit Pods after
October 23, 2018).
Motion Confidential Exhibit 27 (V4L's Responses to JLI's 3rd
Set ofRFAs) at RFA 425 (admitting involvement in U.S. sale
BombzPods ofBombz Pods after October 23, 2018); Motion Confidential
Exhibit 28 (V4L's Responses to JLI's 4th Set of RFAs) at
RFA 704 (admitting U.S. sale ofBombz Pods after October
23, 2018).
9

' I	
.
Motion Confidential Exhibit 27 (V4L's Responses to JLI's 3rd
Set ofRFAs) at RFA 393 (admitting involvement in U.S. sale
Cync Device of Cync Device after October 23, 2018); Motion Confidential
Exhibit 28 (V 4L's Responses to JLI's 4th Set of RFAs) at
RFA 708 (admitting U.S. sale ofCync Device after October
23, 2018) ..
Motion Confidentiiμ Exhibit 27 (V4L's Responses to JLI's 3rd
Set of RFAs) at RFA 409 (admitting involvement in U.S. sale
CyncPods ofBombz Pods after October 23, 2018); Motion Confidential
Exhibit 28 (V4L's Responses to JLl's 4th Set ofRFAs) at
RFA 710 (admitting U.S. sale ofCync Device after Octobe~
23, 2018).
See Reply at 2.
The evidence presented in the above table shows that for SMOK Infinix device, SMOK
Infinix pod, SMOK Fit Device, and SMOK Fit pod, Vapor 4 Life admitted those products.are
manufactured in China and imported into the United States. See e.g., Mot. Ex. 27 (V4L's
Responses to JLI's 3rd Set of RFAs) at RFA 334 (admitting importation of the SMOK Infinix
Pods before October 23, 2018), RFA 345 (admitting involvement in U.S. sale of SMOK Infinix
Pods after October 23, 2018), RF As 346-347 (admitting SMOK Infinix Pods are manufactured
outside the U.S., in China); Mot. Ex. 3 (Second Supp. Response to Interrogatory 4) (listing
Chinese supplier); Mot. Ex. 28 (V4L's Responses to JLI's 4th Set of RFAs) at RFA 694
(admitting U.S. sale of SMOK Infinix Pods after October 23, 2018).
Accordingly, there is no genuine issue as to any material fact concerning importation
with respect to ViV pod, Sourin iShare device, and Sourin iShare pod, SMOK lnfinix device,
SMOK Infinix pod, SMOK Fit Device, and SMOK Fit pod. Juul is entitled to summary
determination as a matter of law that it has satisfied the importation requirement with respect to
those products.
However, for Bombz pod, Cync device, and Cync pod, Juul did not submit evidence such
as photographs of the product packaging, demonstrating that the products are made outside the
10

U.S. or any admissions that the products are imported. See Reply at 3 (the table only shows
evidence of U.S. sales, not importation). Thus, Juul is not entitled to summary determination as
a matter of law that it has satisfied the importation requirement with respect to those products.
2. Infringement
JLI and the Ziip respondents agree that the "Ziip pod" product is representative of all
accused Ziip-manufactured pod products for purposes of infringement of the '669, '568, '130,
and '915 patents. See SUMF, ,r 36; Mot. Ex. 2 (Joint Stipulation Regarding Representative
Accused Products) at 2.
The Ziip respondents do not contest that their accused pod products, alone or in
combination with a Ziip accused device product or other compatible device, contain or perform
each limitation of claims 1, 2, 4, 5, 7, 8, 10, 12, 13, 16, 17, 20, and 21 of U.S. Patent No.
10,070,669; claims 1-4, 9-11, 13, 14, 19-21, 24, 28, and 29 of U.S. Patent No. 10,076,139;
claims 1-3, 5-9, 12, and 17-20 of U.S. Patent No. 10,045,568; claims 1, 2, 4-6, 8-10, 16, 19, 21,
and 27 of U.S. Patent No. 10,058,130; and claims 1-4, 6, 9, 11, 12, 18-23, and 27 of U.S. Patent
No. 10,104,915. See SUMF, ,r 37; Mot. Ex. 7 (May 22 Stipulation), ,r 18.
. .
Thus, the question of whether Ziip accused products contain or perform each limitation of
asserted claims is moot.
3. Remaining Issues
It has not been shown that Juul is entitled to summary determination as a mat:,ter of law
with respect to the remaining issues, i.e., ( 1) infringement of all asserted claims by all accused
products for Eonsmoke and Vapor 4 Life that are not moot; (2) the technical prong of the
domestic industry requirement for all asserted patents; and (3) the economic prong of domestic-
industry requirement for all asserted patents. Eonsmoke and Vapor 4 Life did not agree to a
J
11

stipulation that their products contain or perform each limitation ofthe asserted claims.
Moreover, as argued by the Staff, there are genuine issues of material fact with respect to the
remaining issues. See Staff Resp. at 28-30.
* * *
Accordingly, it is the initial determination ofthe undersigned that Motion No. 1139-51 is
granted in part to the extent indicated.
Pursuant to 19 C.F.R. § 210.42(h), this initial determination shall become the
determination ofthe Commission unless a party files a petition for review ofthe initial
determination pursuant to 19 C.F.R. § 210.43(a), or the Commission, pursuant to 19 C.F.R.
§ 210.44, orders on its own motion a review ofthe initial determination or certain issues
contained herein.3
David P. Shaw
Administrative Law Judge
Issued: August 5,2019
3 The parties are reminded to comply with Ground Rules 5.n and 5.1.
12

CERTAIN ELECTRONIC NICOTINE DELIVERY SYSTEMS AND COMPONENTS
THEREOF
INV. NO.337-TA-1139
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached Order No.35(Initial Determination) has
been served by hand upon the Commission Investigative Attorney, Paul Gennari,Esq., and the
following parties as indicated, on AUG 2 7 2019
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street SW,Room 112A
Washington, DC 20436
FOR COMPLAINANT JUUL LABS,INC.:
Daniel E. Yonan, Esq.
STERNE,KESSLER,GOLDSTEIN & FOX PLLC
1100 New York Avenue, NW
Washington, DC 20005
( ) Via Hand Delivery
( )Express Delivery
(.4'Via First Class Mail
( )Other:
FOR RESPONDENT VAPOR 4 LIFE HOLDINGS,INC.:
Eric N. Heyer, Esq.
THOMPSON HINE LLP
1919 M Street, NW,Suite 700
Washington, DC 20036
(202)-331-8800
( )Via Hand Delivery
( )Express Delivery
(XVia First Class Mail
( ) Other:
FOR RESPONDENT EONSMOICE,LLC:
Stephen M. Lobbin, Esq.
SML AVVOCATI P.C.
7538 Draper Avenue
San Diego, CA 92037
( )Via Hand Delivery
( )Express Delivery
(vrVia First Class Mail
( ) Other:

CERTAIN ELECTRONIC NICOTINE DELIVERY SYSTEMS AND COMPONENTS
THEREOF
INV. NO.337-TA-1139
FOR RESPONDENTS ZLAB S.A.; SS GROUP HOLDINGS; AND SHENZHEN YIBO
TECHNOLOGY CO.,LTD.:
Steven Susser, Esq.
CARLSON,GASICEY AND OLDS,P.C.
400 West Maple Road, Suite 350
Birmingham, MI 48009
( ) Via Hand Delivery
( )Express Delivery
(Jr- Via First Class Mail
( )Other:
RESPONDENT:
Keep Vapor Electronic Tech. Co., Ltd.
Block D,XinLong Techno Park
ShaJing Town,Bao An District
Shenzhen, China
( )Via Hand Delivery
( )Express Delivery
(vr Via First Class Mail
( ) Other:
2

Certain Electronic Nicotine Delivery Systems and Components Thereof, Inv. 337-TA-1139

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